`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`FedEx Corp.,
`Petitioner
`
`v.
`
`Intellectual Ventures II LLC,
`Patent Owner
`_________________________
`
`U.S. Patent No. 6,633,900
`_________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,633,900
`
`
`
`
`
`Exhibit 2101 Page 1
`
`IV Exhibit 2101
`FedEx v. IV
`Case IPR2017-00743
`
`

`

`U.S. Patent No. 6,633,900
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS .......................................................................................... ii
`
`LIST OF EXHIBITS ................................................................................................ iv
`
`TABLE OF AUTHORITIES ..................................................................................... v
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Statement of Precise Relief Requested for Each Claim Challenged ............... 3
`
`A.
`
`B.
`
`Claims for Which Review Is Requested ............................................... 3
`
`Statutory Grounds.................................................................................. 3
`
`III.
`
`’900 Patent Overview ...................................................................................... 4
`
`A.
`
`B.
`
`Summary ............................................................................................... 4
`
`Prosecution History ............................................................................... 8
`
`IV. The Level of Ordinary Skill in the Art ............................................................ 9
`
`V.
`
`Claim Construction ........................................................................................10
`
`VI. Ground 1: Storch and Butler Render Obvious Claim 1 Under 35
`U.S.C. § 103 ...................................................................................................11
`
`A. Overview of Storch .............................................................................11
`
`B. Overview of Butler ..............................................................................14
`
`C.
`
`D.
`
`Rationale to Combine Storch and Butler ............................................16
`
`Storch and Butler Collectively Teach Every Element of Claim 1 ......18
`
`VII. The Ground Presented in this Petition Is Not Redundant of the Ground
`Presented in IPR2017-00743 .........................................................................40
`
`VIII. Mandatory Notices Under 37 C.F.R. § 42.8 ..................................................41
`
`A.
`
`B.
`
`Real Party-in-Interest ..........................................................................41
`
`Related Matters ....................................................................................41
`
`–ii–
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`Exhibit 2101 Page 2
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`

`

`U.S. Patent No. 6,633,900
`
`C.
`
`D.
`
`Lead and Backup Counsel ...................................................................42
`
`Service Information .............................................................................43
`
`IX. Grounds for Standing .....................................................................................43
`
`X.
`
`Fee Payments .................................................................................................43
`
`XI. Conclusion .....................................................................................................44
`
`
`
`
`
`–iii–
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`Exhibit 2101 Page 3
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`

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`U.S. Patent No. 6,633,900
`
`LIST OF EXHIBITS
`
`Exhibit 1001.
`
`U.S. Patent No. 6,633,900 to (“the ’900 patent”)
`
`Exhibit 1002.
`
`U.S. Patent No. 5,920,846 to Storch (“Storch”)
`
`Exhibit 1003.
`
`U.S. Patent No. 4,922,516 to Butler (“Butler”)
`
`Exhibit 1004.
`
`Declaration of Tal Lavian, Ph.D.
`
`Exhibit 1005.
`
`Prosecution History of U.S. Application No. 09/509,100
`
`Exhibit 1006.
`
`Exhibit A to Plaintiff Intellectual Venture II LLC’s
`
`Infringement Contentions, Intellectual Ventures II LLC v.
`
`FedEx Corp., 2:16-cv-00980 (E.D. Tex., Jan. 17, 2017)
`
`Exhibit 1007.
`
`Complaint for Patent Infringement, Intellectual Ventures II LLC
`
`v. FedEx Corp., 2:16-cv-00980 (E.D. Tex., Aug. 31, 2016)
`
`Exhibit 1008.
`
`U.S. Patent No. 6,748,318 to Jones (“Jones”)
`
`Exhibit 1009.
`
`U.S. Patent No. 5,715,905 to Kaman (“Kaman”)
`
`Exhibit 1010.
`
`U.S. Patent No. 5,623,260 to Jones
`
`
`
`
`
`–iv–
`
`Exhibit 2101 Page 4
`
`

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`U.S. Patent No. 6,633,900
`
`TABLE OF AUTHORITIES
`
`CASES
`Cuozzo Speed Techs, LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................10
`
`Microsoft v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ..........................................................................11
`
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ............................................................................10
`
`STATUTES
`
`35 U.S.C. § 102 ....................................................................................................3, 40
`
`35 U.S.C. § 103 ................................................................................................ passim
`
`35 U.S.C. § 311 ....................................................................................................3, 43
`
`35 U.S.C. § 315 ........................................................................................................43
`
`RULES/REGULATIONS
`
`37 C.F.R. § 42.100(b) ..............................................................................................10
`
`37 C.F.R. § 42.104 ............................................................................................ 11, 43
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ..................................................................11
`
`–v–
`
`Exhibit 2101 Page 5
`
`

`

`U.S. Patent No. 6,633,900
`
`I.
`
`
`Introduction
`
`FedEx Corp. requests inter partes review of claim 1 of U.S. Patent No.
`
`6,633,900 (“the ’900 patent”) (Ex. 1001.) The Board should institute review and
`
`cancel claim 1 in view of the obviousness ground presented in this petition.
`
`The ’900 patent discloses and claims a method for distributing work order
`
`assignment data to a field crew. (Ex. 1001 at 2:20-24, 15:7-27.) The method of
`
`claim 1 includes eight different steps (A-H), but each one was well known long
`
`before the ’900 patent. (Ex. 1004 ¶¶ 6-7.) Steps A-B and E-H recite well-known
`
`tasks performed in prior art dispatching process: (A) updating a database with a
`
`new work assignment; (B) notifying a field crew of the assignment; (E) presenting
`
`a list of assignments; (F, G) retrieving and displaying detailed data regarding an
`
`assignment; (H) updating the detailed data based on field crew input. (Ex. 1004
`
`¶ 7; Ex. 1001 at 15:11-27.) The ’900 patent admits that these type of dispatching
`
`steps were performed in prior art systems. (Ex. 1001 at 1:18-51; Ex. 1004 ¶ 8.) The
`
`remaining steps, C and D, add login functionality that merely verifies field crew
`
`identity and notifies the field crew of a successful login. (Ex. 1001 at 15:11-27; Ex.
`
`1004 ¶ 9.) Steps C and D are untethered to the remaining claim elements and recite
`
`only basic functions of system access that were well known long before the ’900
`
`patent. (Ex. 1004 ¶ 9.)
`
`–1–
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`Exhibit 2101 Page 6
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`

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`U.S. Patent No. 6,633,900
`
`The ’900 patent, however, purports to have improved the prior art
`
`dispatching systems—which allegedly used voice, fax, or proprietary technology
`
`for communication—by using TCP/IP. (Ex. 1001 at 1:52-2:38.) Of course, the
`
`’900 patent inventors did not invent TCP/IP, (Ex. 1004 ¶ 10; Ex. 1001 at 4:52-55),
`
`and applying these ubiquitous protocols to existing systems is not patent worthy.
`
`Worse yet, claim 1 does not even mention a network, nor is it limited to TCP/IP.
`
`(Ex. 1004 ¶ 11.) Instead, it is silent regarding any communication protocol and the
`
`only components it recites are an “enterprise computing system,” a “mobile field
`
`unit,” and a “database.” (Id.; Ex. 1001 at 15:7-11.) Moreover, the TCP/IP protocol
`
`disclosed in the ’900 patent is simply one embodiment of the broader concept of a
`
`“non-proprietary technolog[y]” that the ’900 patent contrasts with preexisting
`
`“proprietary technology. (Ex. 1001 at 1:66-2:14-27.)
`
`This petition presents a single obviousness ground based on two references
`
`from the telecommunications industry, Storch and Butler. As Storch and Butler
`
`demonstrate, technicians in this industry used mobile technician access units to
`
`exchange information with enterprise-side dispatching systems to perform each
`
`step of claim 1. (Ex. 1004 ¶¶ 12, 13.) Because the combination of Storch and
`
`Butler renders obvious claim 1, Petitioner requests that the Board institute review
`
`and cancel claim 1. (Id. ¶¶ 6-13, 51, 139-140.)
`
`–2–
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`Exhibit 2101 Page 7
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`

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`U.S. Patent No. 6,633,900
`
`II.
`
`
`Statement of Precise Relief Requested for Each Claim Challenged
`
` Claims for Which Review Is Requested A.
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claim 1 of
`
`the ’900 patent and cancellation of this claim as unpatentable.
`
`Statutory Grounds
`
`B.
`
`Claim 1 of the ’900 patent is unpatentable and should be cancelled in view
`
`of the following grounds and prior art references.
`
`Prior Art References
`
`Ref. 1:
`
`Storch, U.S. Patent No. 5,920,846 (Ex. 1002); filed February 27,
`
`1996; prior art under 35 U.S.C. § 102(e).
`
`Ref. 2: Butler, U.S. Patent No. 4,922,516 (Ex. 1003); issued May 1, 1990;
`
`prior art under 35 U.S.C. §102(b).
`
`Ground of Unpatentability
`
`
`
`Ground
`
`1
`
`Storch and Butler render obvious claim 1 under 35 U.S.C. § 103.
`
`–3–
`
`Exhibit 2101 Page 8
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`

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`U.S. Patent No. 6,633,900
`
`III.
`
`
`
`’900 Patent Overview
`A.
`
`The ’900 patent describes a system and method for assigning and
`
`Summary
`
`communicating work orders to field crew personnel. (Ex. 1001 at 2:20-24; Ex.
`
`1004 ¶ 37.) The disclosed systems and methods may be used by businesses such as
`
`“utility companies,” which “deploy numerous employees over a wide geographic
`
`area to service a dispersed infrastructure or client base.” (Ex. 1001 at 1:18-23.)
`
`The disclosed system and method use both an enterprise computing system
`
`and at least one mobile field unit. (Id. at 2:24-25; Ex. 1004 ¶ 38.) The enterprise
`
`computing system is a dispatch system, assigning and communicating work order
`
`assignments
`
`to field crew personnel “with minimum dispatcher/operator
`
`interference.” (Ex. 1001 at 3:38-49.) The field crews use the mobile field unit—a
`
`computing device such as a portable computer, a personal digital assistant (PDA),
`
`or similar device—to receive the work order assignments, gather information about
`
`the work order, and update the enterprise computing system regarding the status of
`
`the work order. (Id. at 3:42-46, 4:13-16, 4:41-44.)
`
`To communicate data between the field crews and the enterprise computing
`
`system, the ’900 patent describes using standard networking components and
`
`techniques that were widely available and well-known. (Ex. 1004 ¶ 39.) In
`
`particular, the ’900 patent discloses using a wireless communication network that
`
`–4–
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`Exhibit 2101 Page 9
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`

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`U.S. Patent No. 6,633,900
`
`supports terminal control protocol/internet protocol (TCP/IP). (Ex. 1001 at 2:24-
`
`27, 3:55-4:4, 4:23-30.) As shown in Fig. 1 (below), the enterprise computing
`
`system 50 of the ’900 patent includes one or more servers 56, 60, 62, 64 or
`
`workstations 66 connected over a LAN 68 to a database 58 and a TCP/IP gateway
`
`70. (Id. at 3:55-4:4.) The mobile field unit 72 includes a wireless radio modem 74
`
`and communicates with the enterprise computing system 50 over the wireless
`
`communication network 54.
`
`
`
`The ’900 patent discloses using this system to perform a method for
`
`distributing work order assignments to field crews as shown in Fig. 5 (below). (Id.
`
`at 8:66-9:19; Ex. 1004 ¶ 40.) The method includes updating a database on the
`
`enterprise computing system to indicate an assignment has been assigned to a field
`
`–5–
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`Exhibit 2101 Page 10
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`

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`U.S. Patent No. 6,633,900
`
`crew, after which the field crew is notified. (Ex. 1001 at 8:66-9:19, steps 300, 302.)
`
`In response to the field crew inputting login data, the method verifies the field crew
`
`identity and notifies the field crew of a successful login. (Id., steps 304-308). The
`
`method also presents a list of assignments to the field crew and retrieves detailed
`
`assignment data in response to input by the field crew. (Id., steps 308-312.)
`
`Finally, in response to the field crew identifying that an action was taken with
`
`regard to the assignment, the database is updated. (Id., step 314.)
`
`–6–
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`Exhibit 2101 Page 11
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`

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`U.S. Patent No. 6,633,900
`
`
`
`Claim 1 of the ’900 patent is the only independent claim and recites a
`
`method for distributing work order assignment data to the field crew. (Ex. 1001 at
`
`15:7-27.) While the ’900 patent describes embodiments where the enterprise
`
`computing system and mobile field unit communicate using a computer network
`
`and TCP/IP, claim 1 is not so limited. (Ex. 1004 ¶ 41.) In fact, claim 1 does not at
`
`–7–
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`Exhibit 2101 Page 12
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`

`

`all limit the communications medium through which the claimed steps are
`
`performed. (Id.) Claim 1 recites:
`
`U.S. Patent No. 6,633,900
`
`1. A method for distributing work order assignment data to a
`field crew using a system having an enterprise computing system
`and at least one mobile field unit, comprising the following steps:
`(A) updating a database on the enterprise computing system to
`indicate an assignment has been assigned to the field crew;
`(B) notifying the field crew of the assignment;
`(C) in response to the input of field crew login data, verifying
`field crew identity;
`(D) notifying the field crew of successful login;
`(E) retrieving and presenting a list of assignments to the field
`
`crew;
`
`(F) in response to field crew input selecting an assignment
`from the list of assignments, retrieving detailed assignment data for
`the selected assignment;
`(G) displaying the detailed assignment data to the field crew;
`
`and
`
`(H) in response to field crew input identifying an action was
`taken with regard
`to the assignment, updating the detailed
`assignment data.
`
`(Ex. 1001 at 15:7-27.)
`
`Prosecution History
`
`B.
`
`The ’900 patent was filed on April 26, 2000 as U.S. Patent Application No.
`
`09/509,100. (Ex. 1001, cover.) This application was a national stage entry from
`
`–8–
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`Exhibit 2101 Page 13
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`

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`U.S. Patent No. 6,633,900
`
`PCT Application No. PCT/US99/00497 filed on January 8, 1999. (Id.) The PCT
`
`application claimed priority to U.S. Provisional Application No. 60/070,858 filed
`
`on January 9, 1998. (Ex. 1005 at 96.) The ’900 patent, however, does not claim
`
`priority back to the U.S. provisional application. (Ex. 1001 at 1:8-9.) Nonetheless,
`
`for purposes of this proceeding only, and without waiving the ability to challenge
`
`the priority date of the ’900 patent before this Office or in another forum,
`
`Petitioner has assumed that the priority date of the ’900 patent is the January 9,
`
`1998 provisional filing date.
`
`The ’900 patent issued after a short prosecution. During the international
`
`phase of the PCT application, the written search report identified only five prior art
`
`references, none of which were sufficiently related (individually or in combination)
`
`to form a prior art rejection of the claims. (Ex. 1005 at 99, 107.) Upon entry into
`
`the U.S., the same examiner who issued the written search report handled the U.S.
`
`prosecution. (See id. at 104, 193 (listing same examiner).) There, the Applicant
`
`was only
`
`issued a restriction requirement, (id. at 193-201 (restriction
`
`requirement)), and the case was allowed after election, (id. at 210-14 (notice of
`
`allowability in response to election)).
`
` The Level of Ordinary Skill in the Art IV.
`
`
`Factors defining the level of ordinary skill in the art include: (1) the types of
`
`problems encountered in the art; (2) the prior art solutions to those problems;
`
`–9–
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`Exhibit 2101 Page 14
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`U.S. Patent No. 6,633,900
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`(3) the rapidity with which innovations are made; (4) the sophistication of
`
`technology; and (5) the educational level of active workers in the field. In re GPAC
`
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`
`Based on these factors, a person of ordinary skill at the time of the alleged
`
`invention of the ’900 patent would have held at least a Bachelor’s Degree in
`
`Electrical Engineering, Computer Engineering, Computer Science or
`
`the
`
`equivalent. (Ex. 1004 ¶¶ 42-43.) One skilled in the art would also have had two or
`
`more years of industry experience in the field of computer networking generally,
`
`and wireless networking or mobile communications specifically, or the academic
`
`equivalent thereof. (Ex. 1004 ¶¶ 44-49 (citing Ex. 1001 at 3:55-4:34, 4:47-5:10,
`
`Figs. 1, 2).) Such a person would have been familiar with the components,
`
`methods, and protocols used at the time of the alleged invention of the ’900 patent
`
`to communicate between a mobile field unit and an enterprise computing system.
`
`(Id.)
`
` Claim Construction V.
`
`
`A claim in an unexpired patent “shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.”
`
`37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary
`
`and customary meaning as would be understood by one of ordinary skill in the art
`
`in the context of the specification. Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct.
`
`–10–
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`Exhibit 2101 Page 15
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`

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`U.S. Patent No. 6,633,900
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`2131, 2142 (2016). “The PTO should also consult the patent’s prosecution history
`
`in [IPR] proceedings.” Microsoft v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`
`Cir. 2015).
`
`In this proceeding, Petitioner submits that the claim terms of the ’900 patent
`
`should be given their broadest reasonable interpretation as understood by one of
`
`ordinary skill in the art and consistent with the disclosure. 37 C.F.R.
`
`§ 42.104(b)(3); Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764
`
`(Aug. 14, 2012). (Ex. 1004 ¶ 50.)
`
` Ground 1: Storch and Butler Render Obvious Claim 1 Under 35
`VI.
`U.S.C. § 103
` Overview of Storch
`A.
`Storch discloses a system that processes service requests1 and dispatches
`
`technicians for installing, maintaining, and repairing telecommunication networks.
`
`(Ex. 1002, Abstract; Ex. 1004 ¶ 52.) Relevant to this proceeding, Storch’s system
`
`includes a dispatching system, or “Work Force Administration Control/Dispatch
`
`Out (WFA/DO) system” that dispatches technicians to customer premises based on
`
`availability and sends service order assignments to those technicians over a
`
`“technician access system (TAS).” (Ex. 1002 at 68:33-47, 71:28-37; Ex. 1004
`
`
`1 Storch sometimes refers to “service requests” as “service orders” or “work
`
`requests.” (See, e.g., Ex. 1002 at 45:48-54.)
`
`–11–
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`Exhibit 2101 Page 16
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`U.S. Patent No. 6,633,900
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`¶ 53.) The technician communicates with the WFA/DO dispatching system over
`
`the technician access system using a “technician access unit (TAU),” which is a
`
`“portable hand-held unit or handset . . . or a microcomputer or laptop
`
`computer . . . .” (Ex. 1002 at 72:15-21, 74:27-37.) Figure 15 of Storch shows the
`
`relationship between the WFA/DO dispatching system, the TAS network, the TAU
`
`device, and the outside technician.
`
`
`
`(Id., Fig. 15 (annotated); see also id., Fig. 9; Ex. 1004 ¶ 54.)
`
`Storch explains that the TAU device communicates with the technician
`
`access system TAS using dual tone multifrequency signaling (DTMF). (Ex. 1002
`
`at 72:14-23.) One skilled in the art would have understood from this disclosure that
`
`–12–
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`Exhibit 2101 Page 17
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`U.S. Patent No. 6,633,900
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`the TAU device could communicate with the technician access system TAS and
`
`the WFA/DO dispatching system by physically connecting the TAU device to the
`
`telephone line while in the field. (Ex. 1004 ¶ 55.) Before the proliferation of
`
`cellular and other wireless networks, this landline-based system of Storch provided
`
`for efficient dispatching of available technicians “to the customer premise at or
`
`before the assigned appointment time to install or repair outside facilities.” (Ex.
`
`1002, Abstract; Ex. 1004 ¶ 55.)
`
`Storch includes several examples describing how the TAU device and
`
`WFA/DO dispatching system communicate with each other to distribute service
`
`orders to the technician, provide the technician with additional information related
`
`to the service orders, and enable the technician to send data to update the service
`
`orders based on tasks performed at the customer site. (Ex. 1004 ¶ 56.) In one
`
`example, Storch explains that when the WFA/DO dispatching system is updated to
`
`include a new service order, the WFA/DO dispatching system determines which
`
`technician will work on the service order. (Ex. 1002 at 70:40-58, 71:28-43; Ex.
`
`1004 ¶ 57.) The WFA/DO dispatching system then transmits a copy of the service
`
`order to the technician’s TAU to notify the technician of the assignment, and
`
`updates its own database to indicate that the job has been dispatched. (Ex. 1002 at
`
`71:44-49; Ex. 1004 ¶ 57.) The technician can log in to the TAU and use the TAU
`
`to exchange data with the dispatching system. (Ex. 1002 at 71:31-35, 72:24-30; Ex.
`
`–13–
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`Exhibit 2101 Page 18
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`

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`U.S. Patent No. 6,633,900
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`1004 ¶ 58.) For example, the technician can use the TAU to request a service
`
`order, and obtain information about a particular service order to facilitate
`
`performing the tasks associated with the service order while at the customer
`
`location. (Ex. 1002 at 71:50-60, 72:24-32.) When the technician completes the
`
`required tasks, he can again log into the TAU device and send data to the
`
`WFA/DO dispatching system to indicate what was performed at the customer
`
`location and whether additional work needs to be performed. (Ex. 1002 at 74:9-23;
`
`Ex. 1004 ¶ 59.) The WFA/DO dispatching system then processes this received data
`
`and updates the electronic database including the service order to indicate that the
`
`service order was completed. (Ex. 1002 at 74:23-26.)
`
` Overview of Butler
`B.
`Butler discloses a portable, hand-held craft technician’s field terminal that a
`
`technician uses to communicate with a central technician access network. (Ex.
`
`1003, Abstract; Ex. 1004 ¶ 60.) Butler explains that a technician may connect the
`
`field terminal to the telephone network in order to communicate with the central
`
`technician access network while in the field. (Ex. 1003 at 3:4-15.) For example, the
`
`technician can use the field terminal to “(1) process requests for new work; (2)
`
`process requests for circuit tests via mechanized loop test systems; and (3) to clear
`
`and close out completed work orders with the operating system central.” (Id. at
`
`3:15-19.) This makes it possible for a technician to “perform a number of field
`
`–14–
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`Exhibit 2101 Page 19
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`

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`U.S. Patent No. 6,633,900
`
`functions without the aid of a maintenance administrator.” (Id. at 3:13-15; Ex.
`
`1004 ¶ 61.) Like Storch, Butler’s field terminal can communicate with the
`
`technician access system using DTMF. (Ex. 1003 at 1:66-2:10; Ex. 1004 ¶ 61.)
`
`Fig. 2A (below) shows an embodiment of the field terminal of Butler. The
`
`field terminal is a “miniature computer” with a display, push button inputs
`
`including a keypad, a modem, and a dual tone encoder/decoder. (Ex. 1003 at 3:56-
`
`4:23; Ex. 1004 ¶ 62.) Butler discloses that the field terminal may be enclosed in a
`
`“rectangular case” that is “pocket-sized and adapted for hand-held operation.” (Ex.
`
`1003 at 4:10-12.) In addition, RJ-11 connector plugs allow for connection to a
`
`telephone line. (Id. at 4:12-14.)
`
`
`
`To access the technician access network, Butler discloses that the technician
`
`must enter login credentials after connecting the field terminal to a telephone line.
`
`Butler states that the technician must “enter the log-on and required password to
`
`gain access to the technician's access system or network.” (Id. at 7:6-11, 8:49-59;
`
`–15–
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`Exhibit 2101 Page 20
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`U.S. Patent No. 6,633,900
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`Ex. 1004 ¶ 63.) This data is entered using the push button inputs on keypad 48.
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`(Ex. 1003 at 8:49-59.)
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` Rationale to Combine Storch and Butler
`C.
`A skilled artisan would have been motivated to combine Storch and Butler,
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`which include similar disclosures and are both directed to the same problem of
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`using hand-held mobile devices to assist technicians while in the field. (Ex. 1004
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`¶¶ 64-71.) More specifically, both Storch and Butler relate to distributing work
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`order assignments to technicians over a telephone line network in the wired
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`telecommunications service industry. (Ex. 1004 ¶¶ 64-66.) Storch teaches a method
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`of distributing work order assignments via a mobile device using an enterprise
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`computing system and a network. See supra Section VI.A. Butler teaches a similar
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`mobile device as contemplated by Storch and for the same purpose (e.g., receiving
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`work order assignments). See supra Section VI.B. (Ex. 1004 ¶ 67.)
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`The technician access system (TAS) in Storch is likely the same
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`contemplated system, or at least a very similar system, as the technician access
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`network (TAN) in Butler. (Ex. 1004 ¶¶ 68-69.) Storch explains that such systems
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`were well known and commercially available. (Ex. 1004 ¶ 68 (citing Ex. 1002 at
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`71:60-65 (stating that “[e]xamples of TASs . . . include a Technician Access Unit
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`(TAN) sold by Bellcore”), 71:60-61 (listing “TASs known in the art”).) Similarly,
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`Butler explains that technician access networks and technician access systems were
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`Exhibit 2101 Page 21
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`U.S. Patent No. 6,633,900
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`well known in the art. (Ex. 1004 ¶ 69; Ex. 1003 at 3:4-19; see also id. at 1:62-2:38
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`(referencing “any of several centralized technician access systems,” and “present
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`technician access systems”).)
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`The technician-side devices are also similar across both references. (Ex.
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`1004 ¶ 67.) For example, Storch explains that in one embodiment, the TAU may be
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`a “Craft-Access unit,” (Ex. 1002 at 72:21-22), while Butler describes the field
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`terminal as a “craft terminal unit,” (Ex. 1003 at 2:45-63.) And as discussed above,
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`both Storch’s TAU and Butler’s field terminal communicate using DTMF
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`signaling over existing telephone lines. See supra Sections VI.A, VI.B.
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`One skilled in the art would have found it obvious and would have been
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`motivated to combine Storch and Butler because they are drawn to solving the
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`same problems, have overlapping teachings, and use similar system-side and
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`technician-side components. (Ex. 1004 ¶¶ 70, 139, 140.) Moreover, because Storch
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`discloses the system from a system level perspective, and Butler discloses its
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`system by focusing on additional implementation details of the technician’s
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`terminal, one skilled in the art would have been motivated to look toward Butler
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`when modifying the TAU device disclosed in Storch. (Id. ¶ 71, 140.)
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`–17–
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`Exhibit 2101 Page 22
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`U.S. Patent No. 6,633,900
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`D.
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`Storch and Butler Collectively Teach Every Element of Claim 1
`“A method for distributing work order assignment data to a
`i.
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`field crew”
`Storch and Butler teach a method for distributing work order assignment
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`data to a field crew. (Ex. 1004 ¶¶ 72-78.) As discussed above, Storch discloses a
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`method for processing and distributing service orders (also referred to as service
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`requests) for installation, maintenance, or repair of a telecommunications system.
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`(Ex. 1002 at Abstract, 6:65-7:40.) When Storch’s system assigns a technician to a
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`particular job, the WFA/DO dispatching system distributes a copy of the service
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`order to the technician access unit. (Id. at 71:44-49, 72:24-32.)
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`One skilled in the art would have understood the data contained in Storch’s
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`service order to be “work order assignment data.” (Ex. 1004 ¶¶ 73-76.) Storch
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`describes the service order as “computer information that contains data” and is
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`“used to convey information and data to various telecommunications company
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`personnel including technicians and specialists so they can perform necessary
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`manual and record work to complete the installation of the requested service.” (Ex.
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`1002 at 53:19-28.) Storch also provides examples of the data included in the
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`service order, such as appointment dates and locations, information regarding
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`installation instructions, and assignment information. (Ex. 1002 at 53:29-52; Ex.
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`1004 ¶ 74.) In fact, not only does Storch’s description of a service order match that
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`of the ’900 patent’s work order, Storch actually provides more detail about the
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`Exhibit 2101 Page 23
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`U.S. Patent No. 6,633,900
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`contents of its service order than the general description provided by the ’900
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`patent. (Ex. 1001 at 3:38-39 (describing a work order as “any type of description of
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`a particular task”); Ex. 1004 ¶ 75.) Thus, one skilled in the art would understand
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`Storch’s disclosed methods for distributing service orders to technicians to teach a
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`method of “distributing work order assignment data to a field crew.” (Ex. 1004
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`¶ 76.)
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`Butler teaches a method of distributing work order assignment data to a field
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`crew similar to Storch’s disclosure, and teaches that its field terminal may be used
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`in implementing such a method. (Id. ¶¶ 77-78.) For example, Butler explains that a
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`technician may use the field terminal to request and receive work data and then
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`display the work data on the terminal display. (Ex. 1003 at 2:3-5.) Moreover,
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`Butler’s terminal may include a modem for downloading “work orders” (id. at
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`3:45-46), and may include a memory to store work orders and “different job
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`related data passages” for a “full day[’]s work,” (id. at 7:2-5).
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`In one example, Butler explains that the terminal may display to the
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`technician the phone number, address, customer name, and description of the
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`problem/complaint for a particular service order. (Id. at 8:60-66.) One skilled in the
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`art would similarly have understood this type of data provided to the technician to
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`inform the technician about the particulars of a work order assigned to him to be
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`“work order assignment data.” (Ex. 1004 ¶ 78.)
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`Exhibit 2101 Page 24
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`U.S. Patent No. 6,633,900
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`ii.
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`
`“using a system having an enterprise computing system and
`at least one mobile field unit, comprising the following
`steps”
`Storch and Butler collectively teach using a system having an enterprise
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`computing system and at least one mobile field unit. (Ex. 1004 ¶¶ 79-86.) As
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`shown in Fig. 9 (below), Storch discloses a system 200 that is a “computer network
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`. . . including a plurality of computer systems . . . which are designated by
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`rectangular blocks.” (Ex. 1002 at 52:16-31; Ex. 1004 ¶ 79.) These computer
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`systems include, among others, the Due Date Availability System (DUDAS) 266,
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`the Work Force Administration Control/Dispatch Out system (WFA/DO) 270, the
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`technician access system (TAS) 276, and the technician access unit (TAU) 278.
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`(Ex. 1002 at 68:33-47; 71:44-72:13.)
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`Exhibit 2101 Page 25
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`U.S. Patent No. 6,633,900
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`
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`(Ex. 1002, Fig. 9 (annotated); Ex. 1004 ¶ 79.)
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`DUDAS is a “dynamic, on-line, real-time, computer data processing system
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`used to manage the appointment dates and times.” (Ex. 1002 at 55:4-8.) DUDAS
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`receives information from the WFA/DO dispatching system for each service order
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`Exhibit 2101 Page 26
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`U.S. Patent No. 6,633,900
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`and processes the information to maintain up-to-date records regarding the
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`availability of qualified technicians. (Id. at 55:39-50; Ex. 1004 ¶ 80.) The
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`WFA/DO dispatching system is a “computer data processing system that sorts,
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`manipulates, processes, stores, inputs, outputs, and controls data relating to the
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`work load and dispatching of outside technicians.” (Ex. 1002 at 68:33-47.) TAS is
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`a “computer data processing system that is designed to assist the outside technician
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`by performing functions such as transferring information and data between
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`WFA/DO 270 and the outside technician 244 to obtain new or current job
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`information from WFA/DO, return jobs, or close out jobs.” (Id. at 71:50-55.) Thus,
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`TAS provides the technician with access to the WFA/DO dispatching system. (Id.
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`at 71:28-37; Ex. 1004 ¶ 80.)
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`One skilled in the art would have understood that components included in
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`system 200, includin