`
`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
`
`
`v.
`
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`__________________
`
`
`Case IPR2017-00729
`
`
`U.S. Patent No. 8,494,581
`TITLE: SYSTEMS AND METHODS FOR MANAGEMENT OF MOBILE
`FIELD ASSETS VIA WIRELESS HANDHELD DEVICES
`Issue Date: July 23, 2013
`
`__________________
`
`SECOND DECLARATION OF JACOB SHARONY, Ph.D., MBA
`
`
`
`
`
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`Exhibit 2008 Page 1
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`IV Exhibit 2008
`FedEx v. IV
`Case IPR2017-00729
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`

`

`Case IPR2017-00729
`U.S. Patent No. 8,494,581
`
`
`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 ................................................................................... 9 
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 11 
`VII.  OVERVIEW OF THE ’581 PATENT .......................................................... 13 
`VIII.  OVERVIEW OF THE INSTITUTED GROUNDS ...................................... 15 
`A.  Overview Of Rappaport ...................................................................... 15 
`B. 
`Overview Of DeLorme ........................................................................ 19 
`C. 
`Overview Of Wright ............................................................................ 20 
`IX.  SUMMARY OF OPINIONS ......................................................................... 21 
`X.  OPINIONS ABOUT RAPPAPORT .............................................................. 22 
`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. ................................................................ 22 
`The Assessment Program in Claims 1-6 Resides On the Remote
`Computing Device And The Field Management Program In
`Claims 7-15 Resides On The Handheld Device. ................................. 26 
`The WPD File Of Rappaport Is Not An Assessment Program
`Or A Field Management Program From The ’581 Patent. ................. 27 
`Claim 1 Is Not Obvious Over Rappaport ............................................ 28 
`Claim 2 Is Not Obvious Over Rappaport ............................................ 31 
`
`B. 
`
`C. 
`
`D. 
`E. 
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`Exhibit 2008 Page 2
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`Case IPR2017-00729
`
`U.S. Patent No. 8,494,581
`
`F. 
`Claim 3 Is Not Obvious Over Rappaport ............................................ 32 
`G. 
`Claim 4 Is Not Obvious Over Rappaport ............................................ 32 
`H. 
`Claim 5 Is Not Obvious Over Rappaport ............................................ 33 
`I. 
`Claim 6 Is Not Obvious Over Rappaport ............................................ 33 
`J. 
`Claim 7 Is Not Obvious Over Rappaport ............................................ 34 
`K. 
`Claim 8 Is Not Obvious Over Rappaport ............................................ 35 
`L. 
`Claim 9 Is Not Obvious Over Rappaport ............................................ 36 
`M.  Claim 10 Is Not Obvious Over Rappaport .......................................... 36 
`N. 
`Claim 11 Is Not Obvious Over Rappaport .......................................... 37 
`O. 
`Claim 12 Is Not Obvious Over Rappaport .......................................... 37 
`P. 
`Claim 13 Is Not Obvious Over Rappaport .......................................... 38 
`Q. 
`Claim 14 Is Not Obvious Over Rappaport .......................................... 38 
`R. 
`Claim 15 Is Not Obvious Over Rappaport .......................................... 39 
`XI.  OPINIONS ABOUT RAPPAPORT AND DELORME ............................... 39 
`A.  A Person Of Ordinary Skill In The Art Would Not Have
`Combined Rappaport With DeLorme To Arrive At ’581 Patent
`Claim 16. ............................................................................................. 39 
`XII.  OPINIONS ABOUT RAPPAPORT AND WRIGHT ................................... 44 
`A. 
`The Inventory Service In Wright Resides On The Remote
`Server And Cannot Be A Field Management Program. ...................... 44 
`The Inventory Data From Wright Is Not Stored In The Remote
`Computing Device. .............................................................................. 47 
`XIII.  APPENDIX A: THE CHALLENGED CLAIMS OF THE ’581
`PATENT ........................................................................................................ 49 
`
`B. 
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`Exhibit 2008 Page 3
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`
`I.
`
`
`
`
`INTRODUCTION
`I, Jacob Sharony, a resident of Dix Hills, New York, over 18 years of age,
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`hereby declare as follows:
`
`1.
`
`I have personal knowledge of all of the matters about which I testify
`
`in this declaration.
`
`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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`claims 1-17 of U.S. Patent Number 8,494,581 to Barbosa et al. (“the ’581 patent”).
`
`I refer to these claims as the “challenged claims.” The full text of the challenged
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`claims appears in Appendix A to my declaration.
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`3.
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`I am being compensated for my work in this proceeding and receiving
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`reimbursement for expenses incurred in the course of my work. My compensation
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`is not contingent in any way on either the opinions I have reached or the outcome
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`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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`described in detail in my CV, which is attached hereto as Appendix B. My
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`analysis of those materials, combined with the specialized knowledge that I have
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`Exhibit 2008 Page 4
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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 (Ex. 1001) and its file history (Ex. 1007); the
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`Petition and the exhibits cited by the Petitioner in this proceeding, including U.S.
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`Patent No. 6,971,063 to Rappaport et al. (Ex. 1002, “Rappaport”); U.S. Patent No.
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`6,321,158 to DeLorme et al. (Ex. 1003, “DeLorme”); U.S. Patent No. 5,857,201 to
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`Wright et al. (Ex. 1004, “Wright”); the Declaration of Tal Lavian (Ex. 1006); IV’s
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`preliminary response and the exhibits cited therein; the Board’s institution
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`decision; and the deposition transcript of Dr. Lavian. I have also reviewed and
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`analyzed the exhibits cited in 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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`
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`Exhibit 2008 Page 5
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`
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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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`8.
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`I received a Bachelor’s Degree (1979) 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.
`
`9.
`
`I have been
`
`involved with mobile and wireless networking
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`technologies since the mid-1990s working as a researcher, developer and educator
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`on wide and local area networks infrastructure and mobile devices. Over these two
`
`decades I have witnessed the change from voice-centric to data-centric networks,
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`and have worked on enterprise mobility products and solutions as early as the late
`
`1990s.
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`10. After obtaining my Ph.D., I led the advanced mobile networking
`
`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
`
`advanced mobile and wireless networks. My work resulted in several issued
`
`patents including patents such as U.S. Patent No. 5,652,751 titled “Architecture for
`
`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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`
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`Exhibit 2008 Page 6
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`link assignment in mobile radio networks with flexible directivity.”
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`11. From 1997-2005, I held various positions at Symbol Technologies
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`(acquired by Motorola Solutions). While working at Motorola/Symbol I gained
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`substantial experience in application-specific mobile devices, and wireless
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`networking and architecture solutions in several vertical applications, e.g.,
`
`transportation and logistics, healthcare, warehousing, retail, education, among
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`others. As Senior Director, Research and Development, I initiated and led several
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`research and development programs in wireless LAN technologies including
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`mobile device management and security. As Senior Director, Technology Strategy
`
`and Development, I was responsible for the research and development of new
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`mobile applications for delivering multimedia-rich content to mobile devices
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`connected over heterogeneous networks. That work resulted in several U.S.
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`patents, including U.S. Patent No. 7,778,649 titled “System and method for asset
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`location in wireless networks” and U.S. Patent No. 6,925,094 titled “System and
`
`method for wireless network channel management.”
`
`12.
`
`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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`
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`Exhibit 2008 Page 7
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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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`13.
`
` 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
`
`industry. Further, the laptops I used to perform the surveys were running Ekahau
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`or AirMagnet site-survey and planning software.
`
`14.
`
`In addition to the summary I have provided here, I describe my
`
`education and experience in greater detail in my CV attached as Appendix B.
`
`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-
`
`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 2008 Page 8
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`15. For further technical background, I have also attached as Appendix C
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`a presentation that I gave in 2009 that summarizes technologies for enterprise
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`mobility and empowering the mobile workforce.
`
`V. LEGAL STANDARDS
`16.
`Intellectual Ventures’ attorneys have informed me that Petitioner in
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`this proceeding is asserting that the challenged claims are unpatentable because of
`
`obviousness. Intellectual Ventures’ attorneys have explained to me the legal
`
`standards that apply to Petitioner’s obviousness challenge. My understanding of
`
`those standards is described below. I am not an attorney, and I do not have formal
`
`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.
`
`17.
`
`I understand that a claim is unpatentable as obvious if the differences
`
`between the claim and the prior art are such that the subject matter as a 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 the
`
`invention.
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`18.
`
`I understand that obviousness is a question of law based on 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 whole; (3) the
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`level of ordinary skill in the art at the time the invention was made; and (4)
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`
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`Exhibit 2008 Page 9
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`objective indicia of non-obviousness.
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`19.
`
`I understand that an obviousness case based on modifying or
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`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.
`
`20.
`
`I understand that example reasons to combine or modify prior art
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`references that may support a conclusion of obviousness include combining prior
`
`art elements according to known methods to yield predictable results, simple
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`substitution of one known element for another to obtain predictable results; use of
`
`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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`21.
`
`I understand that there are also reasons that would prevent a person of
`
`ordinary skill in the art from modifying or combining prior art references.
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`Examples of prior art references that a person of ordinary skill in the art would not
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`Exhibit 2008 Page 10
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`combine or modify to achieve the claimed invention include prior art references
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`that teach away from one another; prior art references that teach away from the
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`claimed invention; prior art references whose combination or modification would
`
`change the principle of operation of either prior art reference; and prior art
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`references whose combination or modification would render them inoperable or
`
`unsuitable for their intended purpose.
`
`22.
`
`I understand 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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`prior art reference must be considered, including parts of those references that
`
`would suggest against the proposed combination or modification.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`23.
`I have been informed by Intellectual Ventures’ attorneys that
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`obviousness is considered from the perspective of a person of ordinary skill in the
`
`art at the time of the invention.
`
`24.
`
`I understand 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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`Exhibit 2008 Page 11
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`25.
`
`I have been informed by Intellectual Ventures’ attorneys that the ’581
`
`patent has an effective filing date of September 18, 2000. Accordingly, my
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`analysis in this case is based on the perspective of a person of ordinary skill in the
`
`art as of that date. My analysis herein would not change if the effective filing date
`
`of the ’581 patent is considered to be September 17, 2001.
`
`26.
`
`I understand 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 Bachelor’s
`
`Degree in Electrical Engineering, Computer Engineering, Computer Science, or
`
`the equivalent, and two or more years of industry experience in the field of mobile
`
`communications, or the academic equivalent thereof.2 Petitioner has asserted that
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`such a person would have been familiar with the components, methods, and
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`protocols used at the time of the invention to communicate between handheld
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`devices and a server.
`
`27.
`
`I do not make any assertions regarding whether 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.
`
`28.
`I had sufficient education and experience to at least qualify as a
`
`2 Any distinctions between the definitions for a person of ordinary skill in the art
`
`proposed by Petitioner and its Declarant (Ex. 1006 at ¶¶ 44-49) do not affect my
`
`opinions.
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`
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`Exhibit 2008 Page 12
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`
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`person of ordinary skill in the art as of September 18, 2000.
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`VII. OVERVIEW OF THE ’581 PATENT
`29. The ’581 patent is titled “Systems and Methods for Management of
`
`Mobile Field Assets via Wireless Handheld Devices.” I observe that the ’581
`
`patent was issued on July 23, 2013, and that the related provisional application was
`
`filed on September 18, 2000.
`
`30. At a very high level, the ’581 patent empowers 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.
`
`31. 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.” (Ex. 1001, 3:45-47.) Specifically, the purpose of the ’581
`
`patent is to allow a mobile workforce to “effectively and accurately operate in the
`
`field,” resulting in the completion of various tasks that are vital for the enterprise.
`
`(Ex. 1001, 3:33-41.)
`
`32. The ’581 patent improves efficiency and accuracy of a mobile
`
`workforce by providing “field operators portable access to industry specific field
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`data management programs,” “solutions for assisting personnel in finding and
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`conducting field operations,” and “instructions . . . to: collect data at the field
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`Exhibit 2008 Page 13
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`location,” among other developments over earlier systems and apparatuses. (Ex.
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`1001, 3:48-54, 4:7-10.) The ’581 patent specifically describes providing
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`instructions to field operators, thus limiting their decision making and avoiding
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`potential errors. (Ex. 1001, 12:15-31.)
`
`33. As one example, the ’581 patent teaches a method of conducting a
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`field operation using a handheld data management device that can include the steps
`
`of:
`
`obtaining directions to a field location using positioning and
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`navigation means provided through said handheld data management
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`device; starting a program associated with the field problem;
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`providing specific information required by the field data management
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`program and related to the field problem; analysis of said specific
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`information by said handheld data management device; and rendering
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`output by said handheld data management device for use in support of
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`said field problem.
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`(Ex. 1001, 4:38-46.)
`
`34. Furthermore, the ’581 patent allows the enterprise as a whole to
`
`become mobile by enabling numerous workers distributed over a wide area in the
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`field to capture field data at the point of activity (where it matters the most). (See,
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`e.g., Ex. 1001, 11:63-12:47.)
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`Exhibit 2008 Page 14
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`35.
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`In addition, the ’581 patent allows the field workers to provide the
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`handheld device’s location information along with their assessments back to the
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`enterprise computing system throughout the course of the field assessment. (Ex.
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`1001, 10:28-30.)
`
`VIII. OVERVIEW OF THE INSTITUTED GROUNDS
`36.
`I understand that the Board instituted trial on whether Claims 1-15 are
`
`obvious over Rappaport, Claim 16 is obvious over Rappaport and DeLorme, and
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`Claim 17 is obvious over Rappaport and Wright. I provide an overview of
`
`Rappaport, DeLorme, and Wright below.
`
`A. Overview Of Rappaport
`
`37. 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.
`
`38. Rappaport is specifically directed to solving issues in designing and
`
`optimizing communication network performance within local wired and/or
`
`wireless environments. (Ex. 1002, 1:9-18.) Such local wired or wireless
`
`environments include, as the primary example from Rappaport, an office
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`occupying one or more floors in a building, or an organization or college
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`occupying several multi-floored buildings in a campus of buildings. (See, e.g., Ex.
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`
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`Exhibit 2008 Page 15
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`1002, 1:35-43, 3:21-27, 6:15-20) As I explain below, I have substantial experience
`
`in designing and optimizing wired and wireless network architectures for those
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`types of environments, including at the Ford Foundation and the Plaza Hotel in
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`New York City.
`
`39. 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.” (Ex. 1002, 3:19-25.)
`
`Rappaport’s system attempts to address those apparent disadvantages and improve
`
`the design and installation optimization of those local wired and wireless networks.
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`40. 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. (Ex. 1002, 6:41-48.) Rappaport explains that using the
`
`disclosed system, “engineer[s] may take the portable handheld computer into the
`
`field, and make alterations to the components, position of the components,
`
`orientation of the components, etc. based on on-site inspection.” (Ex. 1002,
`
`Abstract.)
`
`41. Rappaport describes using off-the-shelf portable handheld computers
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`such as the Palm IIIc from Palm Computing Inc., other PDAs running the PalmOS
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`Exhibit 2008 Page 16
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`operating system, Pocket PCs running the Windows CE OS from Microsoft, Inc.,
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`and tablet computers running Windows, Linux, or Be operating systems. (Ex.
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`1002, 6:27-41.)
`
`42. Like many systems designed to install and optimize local wired or
`
`wireless networks at that time (and even today), Rappaport’s system requires a
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`trained professional (e.g., an engineer or technician)—preferably familiar with
`
`SitePlanner®3 or similar computer aided design (“CAD”) software—to use his
`
`system to design a wireless network and optimize network coverage and
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`performance. For example, the SitePlanner® program that Rappaport describes
`
`does not provide an inexperienced or untrained person with instructions for how to
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`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.,
`
`Ex. 1002, Abstract; 18:30-36.) Indeed, when using such software, the engineer or
`
`technician using the software has many degrees of freedom to choose from when
`
`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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`Exhibit 2008 Page 17
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`designing a communication network, e.g., what components to select, the
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`components orientation, and where to place the components in the network design.
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`(See Ex. 1002, 10:55-63 (“[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”); 18:30-36 (“The
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`portable system contemplated by this invention can be adapted to be used to
`
`optimize the prediction model and prediction model parameters on-site on the fly
`
`at the discretion of the engineer”); Abstract (“engineer[s] may take the portable
`
`handheld computer into the field, and make alterations to the components, position
`
`of the components, orientation of the components, etc. based on on-site
`
`inspection.”).) For example, in my experience, a trained professional is required
`
`for making determinations about where to put access points to avoid interference,
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`reflections, and attenuations.
`
`43.
`
`In Rappaport’s system, an electronic database provides to the
`
`handheld device Wireless Valley Communications Portable Database files or
`
`“WPD” files containing three dimensional models of the physical environment and
`
`design information (e.g., 3-D representations of a multi-floored building and
`
`campuses of multi-floored buildings) stored as CAD models. (Ex. 1002, 3:54-56,
`
`7:1-6.) Rappaport describes those WPD files as containing binary “opcodes and
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`Exhibit 2008 Page 18
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`
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`operands.” (Ex. 1002, 7:55-8:30.) 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. (Ex. 1002,
`
`8:3-30.) WPD files are communicated between the handheld computer and the
`
`SitePlanner® program to send and receive network performance information. (Ex.
`
`1002, 9:18-25, Figs. 3, 9.) In my opinion, and based on that disclosure, the WPD
`
`files would have to be executed by some software application resident on the
`
`handheld computer. (See Ex. 1002, 8:64-67.)
`
`B. Overview Of DeLorme
`
`44. 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.
`
`45. 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.” (Ex. 1003, 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. (Ex. 1003,
`
`Fig. 1N.) Points of interest may include restaurants, hotels, and other tourist
`
`attractions. (Ex. 1003, Figs. 1B-C, 45:23-31.)
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`
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`Exhibit 2008 Page 19
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`46. DeLorme also discloses that portable devices linked with the personal
`
`and/or mainframe computers “may be optionally with, or connected to, portable
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`Global Positioning System (GPS) or [an] equivalent position sensing device.” (Ex.
`
`1003, Abstract.)
`
`C. Overview Of Wright
`
`47. Wright is titled “Enterprise Connectivity to Handheld Devices.” I
`
`observe that Wright was issued on January 5, 1999, and that the application was
`
`filed on June 18, 1996.
`
`48. Wright generally relates to “client/server system and method to access
`
`existing enterprise data sources on an occasional basis.” (Ex. 1004, Abstract.)
`
`49. Wright attempts to address an alleged need in the prior art for “a
`
`client/server architecture that supports occasional connections between low
`
`performance, low overhead, mobile computing devices and existing enterprise
`
`computing systems” including existing enterprise data sources. (Ex. 1004, 1:30-
`
`33, Abstract.)
`
`50. As one example, Wright addresses this problem through disclosing
`
`access to an inventory service located on a remote server where “[a]n inventory
`
`service 192 [that] provides the UpdateInventory task 208 and InterrogateInventory
`
`task 210, and is connected to an inventory data source 182.” (Ex. 1004, 7:51-53.)
`
`Wright provides that a FormLogic server “serves as a gateway between the [client]
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`Exhibit 2008 Page 20
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`and enterprise data sources,” such as inventory data source 182, in providing the
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`ability “to link hardware devices . . . to access existing enterprise data sources on
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`an occasional basis.” (Ex. 1004, 6:22-30.)
`
`IX. SUMMARY OF OPINIONS
`51.
`In my opinion, none of the instituted claims are obvious over
`
`Rappaport, Rappaport and DeLorme, and Rappaport and Wright. In particular,
`
`none of claims 1-17 are obvious for at least the following reasons:
`
`CLAIM(S)
`1-15
`
`1-6 and
`7-17
`
`1-17
`
`1
`
`2-6 and
`9-15
`7 and 8
`
`16
`
`SUMMARY OF OPINION
`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.
`The assessment program in claims 1-6 resides
`on the remote computing device and the filed
`management program in claims 7-17 resides
`on the handheld device.
`is not an
`The WPD file of Rappaport
`assessment program or a field management
`program from the ’581 patent.
`Claim 1
`is not obvious over Rappaport
`because Rappaport
`does
`not
`disclose
`“collecting field data . . . in response to the
`assessment program.”
`Claims 2-6 and 9-15 are not obvious over
`Rappaport.
`Claims 7-8 are not obvious over Rappaport
`because Rappaport does not teach suggest or
`disclose “a communication module configured
`to download a field management program
`stored in a computing device located remotely
`from the handheld device” or “wirelessly
`download the field management program.”
`A person of ordinary skill in the art would not
`have combined Rappaport and DeLorme to
`
`SECTION
`X.A.
`
`X.B.
`
`X.C.
`
`X.D.
`
`X.E. - I.;
`X.L. - R.
`X.J.- K.
`
`XI.A.
`
`
`
`Exhibit 2008 Page 21
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`
`
`Arrive at ’581 patent claim 16.
`The inventory service in Wright resides on the
`remote
`server and cannot be a
`field
`management program.
`The inventory data from Wright is not stored
`in the remote computing device.
`
`XII.A.
`
`XII.B.
`
`17
`
`17
`
`
`
`X. OPINIONS ABOUT RAPPAPORT
`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.
`
`52.
`
`In reading Rappaport, a person of ordinary skill in the art would have
`
`understood that Rappaport was disclosing at least four embodiments for achieving
`
`the purpose of
`
`its
`
`invention—a system
`
`for designing and measuring
`
`communication network performance within buildings pre- and post-wireless
`
`network deployment. One embodiment includes a portable handheld computer, as
`
`depicted in Fig. 1, which includes a display, user interface (UI) buttons, and a
`
`serial port for communication. (Ex. 1002, 6:27-7:6, Fig. 1.) A second embodiment,
`
`as depicted in FIG. 3, includes a portable computer, on a cradle, and a server
`
`computer, where the c