`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`____________
`
`Record of Oral Hearing
`Oral Hearing Held: April 26, 2018
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and JOHN A.
`HUDALLA, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`APPEARANCES:
`
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`DANIEL C. TUCKER, ESQUIRE
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Wilmer Cutler Pickering Hale & Dorr, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 21090
`
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`
`
`KEVIN MCNISH, ESQUIRE
`ALAN S. KELLMAN, ESQUIRE
`Desmarais, LLP
`230 Park Avenue
`New York, NY 10169
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, April 26,
`2018, at 11:15 a.m., at the U.S. Patent and Trademark Office, Madison
`Building East, 600 Delany Street, Alexandria, Virginia, before Walter
`Murphy, Notary Public.
`
`
`
`2
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`
`P R O C E E D I N G S
`THE USHER: All rise.
`JUDGE PARVIS: Please be seated. We are here for IPR2017-00741.
`The challenged patent is U.S. patent No. 6,633,900 B1. Petitioner is FedEx
`Corporation. Patent Owner is Intellectual Ventures II, LLC. It's the same
`panel Judge Parvis, Judge McKone who is appearing remotely, and Judge
`Hudalla is here next to me.
`The parties, the same attorneys, so we don't need to redo
`introductions. Again, the guidance for this hearing was provided in the Oral
`Hearing Order of April 2nd, 2018. Again each side will be given 30 minutes
`for oral argument. After this hearing we will have a one hour break for
`lunch, and then after lunch we will conduct the remaining two hearings.
`Again, this hearing is open to the public and a full transcript of it will
`become part of the record. Please remember to speak into the microphone at
`the podium so that all judges can hear you and please speak into the
`microphone information identifying the document that is projected on the
`screen. The remote judge has a copy of the demonstratives but can't actually
`see the screen and anyone reading the transcript will also want to know what
`you're referring to. So anytime counsel for the Petitioner, you may proceed.
`MR. TUCKER: Thank you, Your Honors, and good morning. Daniel
`Tucker on behalf of Petitioner FedEx Corp. I'd like to reserve ten minutes
`for rebuttal.
`The petition in this case demonstrates that claim 1 is obvious over the
`combination of the prior art references Storch and Butler. In fact the Patent
`Owner does not contest that Storch and Butler disclose nearly every element
`3
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`of claim 1. Instead, the Patent Owner makes two arguments in its Patent
`Owner response and those are what I'd like to address today.
`First, the Patent Owner incorrectly argues that the term mobile field
`unit requires a wireless communication capability and second, the Patent
`Owner incorrectly argues that it would not have been obvious to combine
`these two references, Storch and Butler. And so I'd like to start with the
`mobile field unit argument.
`The BRI of mobile field unit does not require wireless and Patent
`Owner's arguments to the contrary are incorporating in from the
`specification limitations into the claim, and so for claim construction we
`should start with the plain language of the claim and we've reproduced claim
`1 on slide 39. Claim 1 does not include the word wireless. It doesn't recite
`wireless in any way, shape or form. It doesn't require a wireless network
`and it doesn't allude at all to wireless communications. This stands in sharp
`contrast to original claim 1 of this application which we produced on slide
`17 that did require a wireless network and that did require that the mobile
`field unit communicates with the wireless network. Original claim 54,
`which is the claim that would issue as claim 1, did not include any of these
`limitations.
`Based on these differences as we show on slide 19, the examiner
`issued a restriction requirement in the case dividing the claims into two
`groups, original claim 1 which requires a wireless communication network
`and original claim 54 which would issue as claim 1 which does not require a
`wireless network.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`4
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`
`The examiner explained, as we have reproduced in slide 20 which is
`the prosecution history Exhibit 1005 at 197, that the difference between
`these inventions was in fact the existence or lack of requirement of a
`wireless communication network. The examiner stated inventions 1 and 4,
`that is original claim 1 and issued claim 1 are related as a combination and a
`sub-combination. The sub-combination, the one that would issue as claim 1
`has separate utilities such as a method that lacks the following step a) a
`wireless communication network. So the examiner recognized that this
`distinction between the two claims and in response to this requirement, the
`applicants elected the claims that do not require wireless.
`They elected, as we show on slide 21 in response to that requirement
`without traverse to prosecute the claims that do not require a wireless
`network, and so the Patent Owner cannot argue that the mobile field unit in
`these claims requires wireless communications when it gave that up during
`the prosecution of this patent and instead elected the broader set of claims
`that are not limited to wireless. As we mentioned in our reply, the Patent
`Owner doesn't address these powerful parts of the prosecution history and
`instead focuses their attention on the specification, and their argument is that
`the specification consistently describes mobile field unit as including
`wireless communications.
`There is a problem even with that aside from the prosecution history,
`which is that the specification is not unequivocal on this point. As we show
`on slide 22, the specification explains that the mobile field unit may be a
`portable computer, that's the 900 patent column 4, lines 13 through 23. The
`mobile field unit may be the portable computer. Well there's evidence in
`5
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`this case that the portable computer is not necessarily wireless. It is extrinsic
`evidence but it is evidence nonetheless. Multiple dictionary definitions that
`make clear that a portable computer is defined by just that, it's portability, its
`size, whether it can be easily carried, not whether or not it needs to require
`wireless communications.
`The specification includes another point just one paragraph down at
`column 4, line 24, which we've reproduced on slide 24, uses the optional
`word may. Mobile field unit may comprise wireless radio modem. In other
`words, it may not. These statements in the specification are the antithesis of
`lexicography and disclaimer. That standard is exacting. That's what the
`G.E. Lighting case tells us. You have to have clear and unmistakable
`statements in the intrinsic record to get to where the Patent Owner needs to
`get to and, in this case, even though the Patent Owner is going to get up and
`point to portions of the specification that seem to say that the invention
`requires wireless, they cannot contend with these other parts of the
`specification that make it optional and even more importantly, the
`prosecution history that very clearly shows just as in the Rambus case that
`we cited in our reply, that they pursued a broader invention and they can't
`narrow it today at the Patent Office. So the --
`JUDGE PARVIS: Does this case then turn entirely on the
`construction of mobile field unit?
`MR. TUCKER: Yes, Your Honor, it does.
`JUDGE PARVIS: And Petitioner, just to be clear, Patent Owner
`raised in its response, the Petitioner has not argued that it would have been
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`6
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`obvious to modify the Storch Butler combination so that it used wireless
`communication.
`MR. TUCKER: That is correct. We are not taking that position in
`this proceeding. Instead, our position is that this term is not limited to
`wireless and so under the correct broadest reasonable interpretation Storch
`and Butler which teach portable mobile computers just like the 900 patent
`teaches that can be integrated in and out of different parts of the network at a
`customer facility or a back end facility, those are mobile field units under the
`broadest reasonable interpretation even though we concede in this
`proceeding that Storch and Butler are wired systems.
`JUDGE PARVIS: And there's no argument that it would
`(indiscernible) the case (indiscernible)?
`MR. TUCKER: We have not made that argument in these papers.
`JUDGE MCKONE: Now, the Patent Owner is going to point to
`various examples in the patent of wireless systems and I understand the
`qualifying language you just pointed out to me, are there any counter
`examples in the patent of wired systems that you want to point us to?
`MR. TUCKER: We have pointed to two parts of the patent, the
`specification that we think supports our position are the two that I just went
`over, Judge McKone. That's in column 4 where the specification describes
`wireless as an optional component, not necessarily required.
`JUDGE MCKONE: So all the embodiments and examples actually
`described are wireless embodiments; is that correct?
`MR. TUCKER: That is correct and in this case that's not controlling
`because there are examples in column 4 that wireless is optional and, like I
`7
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`said in the prosecution history the examiner recognized that mobile field unit
`is not limited to wireless and in response to a restriction requirement the
`applicant said okay, we'll take the broader claims. They could have taken
`that wireless claim and they didn't and they elected those claims without
`traverse, and so this brings this case into the Rambus case and the Ventana
`case that we cited in our reply under similar facts that the Federal Circuit
`held very clearly and that the claim term had to be construed more broadly
`and not in this narrow way based on that restriction requirement.
`JUDGE PARVIS: Petitioner in its reply, points to column 4, I guess it
`ends right around lines 29 through 30, column 4, the reference that the
`wireless radio modem may be internal or external for a computing device.
`Has Petitioner argued that the combined teachings of Storch and Butler
`could have an external wireless modem?
`MR. TUCKER: So I think, Judge Parvis, the point -- I just want to
`make sure I'm on the same page with you, the part you're talking about is
`reproduced on our slide 24, its wireless radio modem may be internal or
`external?
`JUDGE PARVIS: Uh-huh, right.
`MR. TUCKER: Right.
`MR. TUCKER: I'm sorry, what was your question?
`JUDGE PARVIS: So with this sentence, has Petitioner taken the
`position that it would have been obvious to modify Storch and Butler to have
`one of those two, have an internal or an external wireless radio modem?
`MR. TUCKER: We have not taken the position that it would be
`obvious to modify Storch and Butler to include wireless. We have not taken
`8
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`that position. What we did point out, and I just want to focus on this
`sentence in the 900 patent because there is a dispute between the parties
`here. I think Patent Owner reads this entire paragraph as saying this part of
`the specification only means that the mobile field unit's wireless radio can be
`internal or external to the mobile field unit. It doesn't say that the mobile
`field unit might not have a wireless radio modem. We completely disagree
`with that position and instead, as we've stated in our reply and I think we
`explained, the first sentence in this paragraph is broad. It's broad. Mobile
`field unit may also comprise wireless radio modem 74. It's optional. It can
`or cannot. The last sentence in the paragraph makes the Patent Owner's
`point that it can be internal or external.
`So they can't attribute this technical distinction to both of these
`sentences. They make different points. The broader point is it could include
`the wireless radio modem. It also could not include it, and that assuming
`that that's a topic sentence in a paragraph in the instance where it could
`include the wireless radio modem, that could be internal or external too. So
`that sentence does not support the Patent Owner's position that somehow all
`mobile field units must have wireless communication.
`We think that the intrinsic record is enough here. We don't think that
`it's necessary to get into the extrinsic record. But I'd like to talk about it
`briefly in case the Board disagrees and thinks it needs to go to the extrinsic
`record, because here the extrinsic record confirms everything that I've said
`today. The reply that we filed discusses the problems with the extrinsic
`evidence that the Patent Owner cited. The Patent Owner's position
`remember is that mobile requires wireless, so mobile and wireless are
`9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`synonymous and the Patent Owner submitted some dictionary definitions
`and some regulations from the Federal government to support its position.
`As we pointed out in the reply, the problem with those regulations and
`definitions is they were almost exclusively from wireless sources. So if you
`want a definition that equates mobile with wireless, you're going to pick a
`wireless source and that's exactly what the Patent Owner did. So in response
`in our reply we've provided a much broader range of extrinsic evidence.
`Multiple textbooks, multiple articles, multiple technical dictionaries, all of
`which confirm that mobile and wireless are not synonymous. We
`summarized those in our reply and I'd like to just go over a couple of them
`real quick today.
`On slide 25, we've reproduced the Tanenbaum computer network
`textbook published just two years before the priority date of this patent that
`explains that portable computers are sometimes wired and even includes this
`little chart, wireless mobile to explain that you can have things that are
`mobile but not wireless, wireless but not mobile. Pretty much every
`iteration, and it even gives an example that's common through much of this
`extrinsic evidence. This idea that a worker or a traveler could be at work or
`at their hotel and plug their portable laptop computer in to the wired network
`and then when they're done for the day, they unplug and they go home or
`they go somewhere else and they plug it back in and that computer is
`mobile. That computer is not wireless, and that's the example and
`Tanenbaum gives on slide 26, that's the example that the Kurose & Ross
`textbook gives. So we have a textbook from just before the patent's priority
`date and just after the patent's priority date that confirm with the same
`10
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`working example that one skilled in the art did not equate wireless and
`mobile to be the same thing.
`Slide 27 also includes an article from Charles Perkins explaining the
`same thing, that you can be mobile without being wireless. That's exactly
`what Mr. Perkins says. Computers can be considered mobile, even without
`any data communication or with wired data communications. For example,
`a user might wish to disconnect from an office ethernet connection and
`reconnect via a telephone link shortly thereafter.
`So, to put this all in context, coming back to a question that Judge
`Parvis asked earlier, this whole argument hinges on claim construction.
`Patent Owner makes two arguments in its Patent Owner response. One is if
`we win on claim construction, we win the claims. We obviously disagree
`with that and do not think that a mobile field unit should be wireless. But
`the other argument, as we explained in our reply, is just a rehash of the
`wireless argument. Patent Owner's second argument that the Storch and
`Butler do not teach a mobile field unit under any reasonable interpretation of
`the claim is because you can't communicate when you're in motion in the
`Storch system and they say it multiple times in the Patent Owner's response
`because you're tethered to a land line. That's the same argument just
`repackaged in a different way. So this dispute, it all comes down to whether
`a mobile field unit requires wireless or not and if the Board agrees with the
`Petitioner that it does not require wireless, these arguments all fall away.
`So with the time that I have in my opening arguments, I'd like to
`switch to the combination argument. As it did in the Patent Owner
`preliminary response the Patent Owner asserts that it wouldn't have been
`11
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`obvious to combine Storch and Butler. Patent Owner's arguments can be
`broken down into two categories that I'd like to address.
`First, it would not have been efficient to combine Storch and Butler
`and second what basically amounts to an attack on some of the rationales
`that we proffered in the case for making the obviousness determination.
`And so before I address those arguments, I think it's important to provide
`context to the Board to summarize exactly what we did provide in the
`petition because we provided more than you would think for reading the
`Patent Owner's response.
`So, on slide 33 we explain here that we provided general reasons first,
`why it would have been obvious to combine Storch and Butler. The
`references are directed to the same problem. The references disclose similar
`back end systems and the references disclose additional implementation
`details in the technical terminal. And then we provided specific reasons,
`why it would have been obvious to combine Storch and Butler and
`specifically we provided a specific reason for every single claim limitation
`where we relied on Butler to fill a gap and so when I summarize Patent
`Owner's arguments I'd like to address the second one first. It amounts to an
`attack on our rationale. The attack on the rationale, it really only attacks
`these more general arguments that I've summarized on 33. It doesn't attack
`the more specific ones. For example, the Patent Owner in its response cites
`cases for the proposition that a similar purpose or similar disclosure by itself
`wouldn't have been enough, but as I discussed that wasn't our position. It's
`not our position that this is the only reason. We provided general reasons
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`12
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`and then specific reasons tethered to every single element of the claims and
`we briefed this in our reply.
`So with the couple of minutes that I have I'd like to address the other
`part of Patent Owner's argument which is the sufficiency argument, that it
`wouldn't have been obvious to combine Storch and Butler because it
`wouldn't have been efficient, and so to step back, in the proposed
`combination Butler's short message -- Butler teaches sending a short
`message -- is used to notify the technician of the initial task to be performed,
`and then responsive to the technician's selection in this combination, Storch's
`more detailed message is sent to provide the additional details.
`We explained this in our petition, as I've highlighted on slide 35, that
`this allows the combined system to more efficiently notify, focused on notify
`-- I've highlighted it three times in this one paragraph -- more efficiently
`notify the technician using a shorter initial message. This is how all
`communications work. If I go on the Internet, to say ESPN to check the
`scores from last night, I get a page that includes all the scores for all the
`games. It's a brief message with a little bit of information. If I want more
`information I click on the link and I get more data. It may not be efficient
`overall because you're sending data twice, sometimes it's repeated data but
`it's more efficient for that initial notification and that was our point with the
`petition.
`The Patent Owner didn't respond to this position. The Patent Owner,
`instead, tried to flip the script a little bit and reframe the argument to argue
`that well, the combination would result in an overall increase in data needed
`to complete the job because there's this overlap between the two pieces of
`13
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`information. But all this means is that our initial argument on slide 35 has
`gone unrebutted, that it would have been more efficient to notify the
`technician in the field that the short message, hey, you've got an assignment,
`and then if the technician wants more information about that assignment he
`can select the assignment from the list and get more information. One more
`point on this is that --
`JUDGE PARVIS: You're just about at your ten minutes before you
`go into your rebuttal time.
`MR. TUCKER: Okay. Thank you. I just want to wrap up with, the
`efficiency argument doesn't make any sense from two additional briefings.
`That's one and we summarized this in our reply, I'll be brief. The 900 patent
`does the exact same thing. On slide 37 you see figure 10 shows the
`summary page. You click the link that says assignment No. 7296 and you're
`brought to an additional detailed assignment page. There's overlap between
`the data in the 900 patent itself. So it doesn't really make sense for the
`Patent Owner to argue that this would have been inefficient.
`Moreover, Dr. Sharony, Patent Owner's expert, admitted that this
`provides the user with additional flexibility and so that undermines the
`Patent Owner's argument. And finally, even if you believe the Patent
`Owner's factual premise, this isn't the law and this is the In re Fulton case
`that we have on slide 38. The cases don't require the combination to be the
`most preferred or desirable. You just need to prove that they would have
`been obvious to one skilled ibn the art. We provided that rationale and much
`of it has gone unrebutted. Thank you, Your Honors.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`14
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`
`MR. MCNISH: Good morning, Your Honors. May it please the
`Board. Claim 1 of the 900 is patentable over Storch and Butler. Claim 1 of
`the 900 patent requires mobile field units and mobile field units
`communicate wirelessly. Storch and Butler don't, as you heard Petitioner
`just discuss. They're limited to land lines because they're designed for
`testing and repairing land line telephone facilities. Claim 1 is patentable
`over Storch and Butler for that reason alone. But claim 1 is also patentable
`over Storch and Butler because the combination of references simply doesn't
`make sense in the context of Storch and Butler.
`FedEx's combination of those references particular with respect to
`limitations F and G of claim 1, as we argued in our Patent Owner response,
`is simply not efficient and it's based on hindsight and conjecture and not a
`preponderance of the evidence. Your Honor, I don't think there's any real
`dispute at this point that a mobile field unit is limiting. It's part of the
`preamble, it limits the claims. It's essential the claims. The method steps of
`claim 1 require the use of a mobile field unit. Really the issue is, what does
`mobile field unit mean in the context of the 900 patent?
`I'm going to be turning to Patent Owner's slide 6. Patent Owner's
`slide 6 describes that the present invention -- this is in the Summary of the
`Invention -- the present invention provides a system for assigning work
`orders, communicating work orders, and communicating at the request of
`field personnel. The system of the present invention comprises an enterprise
`computing system of mobile field unit and wireless communication network,
`and if you continue during that Summary of the Invention, not just a
`Summary of Embodiments, but Summary of the Invention, a mobile field
`15
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`unit comprises a computing device and modem for communicating over the
`wireless network to the enterprise computing system.
`Now, FedEx argued that there's no lexicography here. It's in the
`Summary of the Invention. The mobile field unit, you know, can
`communicate wirelessly. It's right here plain as day in the Summary of the
`Invention, not just the Summary of Embodiments.
`JUDGE HUDALLA: Are you saying that we should disregard the
`other part where it says the mobile field unit may also comprise a wireless
`radio modem?
`MR. MCNISH: So, Your Honor, the way a person of ordinary skill in
`the art would understand that, as Dr. Sharony testified, what that refers to is
`a computing device being provided with a wireless modem or some means
`of wireless communications so as to constitute a mobile field unit, and Dr.
`Sharony gives an example in his declaration testimony. He describes
`something called a Bluetooth null modem, and what that is is a connection
`between a computing device and something such as a cell phone in order to
`achieve wireless communications.
`JUDGE HUDALLA: I guess I'm having trouble because you're
`telling me I should look to probably the aspects of the object of the invention
`and give that higher weight or some sort of higher regard than these other
`parts of the spec where it says hey, you may include a wireless modem. You
`know, we're under a broadest reasonable interpretation in this case. I don't
`see how you square those two things.
`MR. MCNISH: So, let me explain. In Netcraft Corp. v. Ebay, Inc.,
`which I recognize is -- this is a Federal Circuit case from 2008 and I
`16
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`recognize the Phillips case -- the Summary of the Invention mentioned in the
`present invention was enough to limit the scope of the claims, right? So this
`is referring to the invention as a whole and the broadest reasonable
`interpretation under In re Smith International has to be consistent with how
`the patentee describes his or her invention.
`So what the invention is being described as in the specification of the
`900 patent in the Summary of the Invention, not just embodiments, but the
`invention, is that there is a mobile field unit and it has wireless
`communications capabilities. It communicates over a wireless network.
`JUDGE PARVIS: Is the example in column 4 a portable computer, is
`a portable computer necessarily wireless?
`MR. MCNISH: There's certainly examples of wireless portable
`computers, but (indiscernible) it lacks wireless communications capabilities.
`It can be provided with a modem in so as to constitute a mobile field unit.
`JUDGE PARVIS: So the Patent Owner's position then is that say a
`portable computer is not the example of a mobile field unit?
`MR. MCNISH: So a mobile field unit as we're describing it is a
`computing device that communicates wirelessly. So standing alone, the
`mobile field unit would need to include some form of wireless
`communications.
`JUDGE PARVIS: And that's based then on not extrinsic evidence,
`but lexicography?
`MR. MCNISH: Not just lexicography, Your Honor, and actually that
`turns to a good point here. What Petitioner has said is that based on G. E.
`Lighting that unless there is some kind of lexicography or unless there's
`17
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`some kind of disclaimer, you essentially have to read the ordinary meaning
`as broadly as possible and that's just not what the case law is. Under
`Phillips, the ordinary meaning of a claim has to be the ordinary meaning in
`light of the specification. I believe the exact wording is a meaning to the
`ordinary artisan after reading the entire patent.
`So what FedEx is doing, is FedEx is essentially inviting you to
`commit the same error in claim construction that led to the Federal Circuit
`reversing and remanding In re Smith International, the 2017 Federal Circuit
`case, and that legal error is that everything that expressly disclaimed,
`disavowed lexicographer is within the claim without regard to the
`specification. The claims have to be read in conjunction with the
`specification of which they're a part.
`So, and Smith explains that. In re Smith International explains that
`when there is a consistent reference in the specification or something and
`there's a consistent reference here to a mobile field unit as being wireless,
`the claim has to be understood in light of that consistent description and
`even if FedEx were correct about its legal approach, which they're not, we
`still have the lexicography as you see on Patent Owner's slide 6, where
`you've got a definition in the present invention of what the mobile field unit
`is communicating over a wireless network.
`JUDGE PARVIS: So the lexicography, Patent Owner's position that
`the specification has somehow defined mobile field unit to be something
`more narrow perhaps than what would be understood under Phillips, or is
`Patent Owner's position that Phillips in light of the specification defines
`mobile field unit in this way because to me there may be two different
`18
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2017-00741
`Patent 6,633,900 B1
`
`
`arguments there. If Patent Owner is saying that the specification sets forth
`its own definition of mobile field unit in such a way that makes it clear that
`mobile field unit is different than what one of ordinary skill in the art would
`understand, that's a little different argument than under Phillips this is what
`the plain meaning of mobile field unit. Which is Patent Owner's position?
`MR. MCNISH: It's actually both, Your Honor, and let me explain
`that. So under In re Smith International, the Federal Circuit 2017 case, even
`under the broadest reasonable interpretation the claim terms have to be
`understood with respect to how they are consistently defined in the
`specification and as you heard from my colleague earlier, every embodiment
`in which the mobile field unit is communicating with the enterprise
`computing system, it is doing so over a wireless network. That's an example
`of the sort of consistent definition in the specification, or rather the
`consistent discussion in the specification of a mobile field unit
`communicating wirelessly.
`Now, stepping back from that, even assuming the Petitioner's legal
`argument based on G.E. Lighting is correct, and we dispute that it is because
`it fails to consider the ordinary meaning actually as an ordinary meaning in
`light of the specification, we do actually have some lexicography here and
`when we take a look at the Summary of the Invention, you have some pretty
`clear statements that a mobile field unit is going to be communicating over a
`wireless network.
`JUDGE MCKONE: Now what is your response to the argument from
`Petitioner that in response to a restriction requirement, you essentially
`
`1
`2
`3
`
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
