Paper No. 7
`Trials@uspto.gov
`Entered: July 25, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner.
`____________
`
`Case IPR2017-00743
`Patent 6,633,900 B1
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: July 25, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner.
`____________
`
`Case IPR2017-00743
`Patent 6,633,900 B1
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00743
`Patent 6,633,900 B1
`
`
`I. INTRODUCTION
`
`A. Background
`FedEx Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claim 1 of U.S. Patent No. 6,633,900 B1
`(Ex. 1101, “the ’900 patent”). Petitioner indicates that FedEx Corp., FedEx
`Corporate Services, Inc., Federal Express Corporation, FedEx Ground
`Package System, Inc., FedEx Freight, Inc., FedEx Custom Critical, Inc.,
`FedEx Office and Print Services, Inc., and GENCO Distribution System,
`Inc., are real parties in interest. Pet. 44–45. Intellectual Ventures II LLC
`(“Patent Owner”), filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`Upon consideration of the Petition and Preliminary Response, we conclude,
`under 35 U.S.C. § 314(a), that Petitioner has not established a reasonable
`likelihood that it would prevail with respect to the challenged claim.
`Accordingly, we do not institute an inter partes review of claim 1 of the
`’900 patent.
`
`B. Related Matters
`The parties indicate that the ’900 patent has been asserted against
`Petitioner in Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-cv-980
`(E.D. Tex.). Pet. 45; Paper 5, 1. Another petition has been filed challenging
`claim 1 of the ’900 patent (i.e., IPR2016-00741). Id. Petitioner indicates
`that the ’900 patent also has been asserted in Intellectual Ventures II LLC v.
`FTD Cos. Inc., No. 6:16–cv-195 (E.D. Tex.) and Intellectual Ventures II
`LLC v. Sally Beauty Holdings,. Inc., No. 2:15–cv-1414 (E.D. Tex.), but these
`cases have been terminated. Pet. 45.
`
`
`2
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`IPR2017-00743
`Patent 6,633,900 B1
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`
`C. Evidence Relied Upon
`Petitioner relies on the following prior art:
`Ex. 1102 (“Jones”)
`US 6,748,318 B1 June 8, 2004
`
`
`
`
`
`
`
`(Filed May 6, 1997)
`Ex. 1103 (“Kaman”)
`US 5,715,905
`Feb. 10, 1998
`
`
`
`
`
`
`
`(Filed Feb. 5, 1997)
`
`
`
`
`
`
`
`Petitioner also relies on the Declaration of Tal Lavian, Ph.D.
`(Ex. 1104, “Lavian Decl.”).
`
`
`
`
`D. The Asserted Ground
`Petitioner asserts that claim 1 is unpatentable, under 35 U.S.C.
`§ 103(a), over Jones and Kaman. Pet. 3.
`
`E. The ’900 Patent
`The ’900 patent describes a method for managing work order
`assignments. Ex. 1101, 2:29–40. Figure 5, reproduced below, illustrates an
`example:
`
`3
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`IPR2017-00743
`Patent 6,633,900 B1
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`
`
`Figure 5 is flow diagram of a process for distributing work order assignment
`data to a field crew having a mobile unit. Id. at 2:59–61. As shown in
`Figure 5, at step 300, a database is updated by an application program to
`indicate a work order has been assigned to a particular field crew. Id. at 9:2–
`4. At step 302 the field crew is notified of the assignment. Id. at 9:4–5.
`
`4
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`IPR2017-00743
`Patent 6,633,900 B1
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`
`In accordance with Figure 5, at steps 304 and 306, login data input by
`the field crew is verified and the field crew is notified if the login was
`successful. Id. at 9:5–10. At step 308 a list of assignments is retrieved and
`presented to the field crew. Id. at 9:10–11. At steps 310 and 312, in
`response to a selection by the field crew of an assignment from the list of
`assignments, detailed assignment data for the selected assignment is
`retrieved from the database and displayed on the mobile field unit. Id. at
`9:11–16. At step 314 in response to field crew input identifying that an
`action was taken with regard to the assignment, the detailed assignment data
`is updated in the database. Id. at 9:16–19.
`Claim 1, reproduced below, is illustrative of the invention:
`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
`
`5
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`IPR2017-00743
`Patent 6,633,900 B1
`
`
`(H) in response to field crew input identifying an action
`was taken with regard to the assignment, updating
`the detailed assignment data.
`Ex. 1101, 15:6–27.
`
`II. ANALYSIS
`Claim Construction
`A.
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–45 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`Petitioner does not provide express proposed constructions for any
`claim terms. Pet. 10–11. Patent Owner contends that Petitioner’s proposal
`regarding the broadest reasonable interpretation of “at least one mobile field
`unit” presented in a related proceeding, IPR2017-00741, “is not germane to
`deciding whether to institute on this Petition.” Prelim. Resp. 7–8. Patent
`Owner does not provide further proposals regarding the express
`constructions for any claim terms.
`We agree with the parties that no express construction of any term of
`the ’900 patent is needed for this Decision. See Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
`
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`IPR2017-00743
`Patent 6,633,900 B1
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`B. Asserted Ground of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter 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 said subject
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.1 See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`
`1. Level of Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have held at least a Bachelor’s Degree in Electrical Engineering, Computer
`Engineering, Computer Science, or the equivalent,” and “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.” Pet. 10. Petitioner bases
`its argument on the testimony and experience of Dr. Lavian. Id. (citing
`Ex. 1104 ¶¶ 42–49). Patent Owner does not challenge Petitioner’s
`statement. Prelim. Resp. 7. For purposes of this Decision, we adopt
`Petitioner’s statement of the level of skill in the art.
`
`
`1 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
`
`7
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`IPR2017-00743
`Patent 6,633,900 B1
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`
`2. Alleged Obviousness over Jones and Kaman
`Petitioner contends that claim 1 would have been obvious over Jones
`and Kaman. Pet. 11–43. For the reasons given below, Petitioner has not
`demonstrated a reasonable likelihood that it would prevail with respect to
`this challenge.
`
`
`a. Overview of Jones
`Jones describes an advanced notification system that notifies users of
`the arrival of a vehicle, such as an overnight package delivery vehicle.
`Ex. 1102, [57]. Figure 2 reproduced below, illustrates an example:
`
`Figure 2 is a schematic diagram illustrating advance notification system 10
`depicting vehicle control unit (VCU) 12 and base station control unit
`(BSCU) 14, which in turn communicates with customer’s computer 29 or
`
`
`
`8
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`IPR2017-00743
`Patent 6,633,900 B1
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`another of additional communication devices 36. Id. at 5:27–37, 10:52–56.
`Jones describes BSCU 14 as a conventional computer (id. at 14:41–43) with
`modules, such as Vehicle Location Data Base (VLDB) 14a for storing
`vehicle location data and Mapping Software Data Base (MSDB) 14b for
`storing the position vehicle’s 19 location onto maps (id. at 15:37–47, Figs. 7,
`10). According to Jones, vehicle stops for vehicle 19 are programmed into
`advance notification system 10 by entering the respective package addresses.
`Id. at 17:63–65. Additional stops for vehicle 19 are added when requests to
`pick up packages are received. Id. at 18:11–13.
`According to Jones, VCU 12 includes microprocessor controller 16
`and wireless communication device 18 for communicating with BSCU 14.
`Id. at 11:1–7. Microprocessor controller 16 electrically interfaces with
`system menu switch 21, attempt to deliver switch 22, reschedule stop
`switch 23, clock 24, and GPS location device sensor 25, each of which are
`used for vehicle tracking. Id. at 11:19–24. Figure 42 reproduced below,
`illustrates an example:
`
`
`Figure 42 is a diagram of a VCU with a display area and control buttons.
`Id. at 9:52–53. Changes to the route list and order are available to the driver
`via push button entry. Id. at 21:64–65.
`
`9
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`IPR2017-00743
`Patent 6,633,900 B1
`
`
`b. Overview of Kaman
`Kaman describes a vehicle access controller. Ex. 1103, [57].
`According to Kaman, the vehicle access controller includes a keypad or card
`reader to detecting indicia of identity, such as an access code, of a
`prospective user. Id. at 2:16–28.
`
`
`c. Claim 1
`Petitioner relies on Jones for teaching the preamble and most of the
`steps recited in claim 1, except Petitioner relies on Kaman for teaching steps
`relating to logging in, i.e., steps (C) and (D). Pet. 11–43. Because our
`determination hinges on the last step, step (H), recited in claim 1, we need
`not discuss fully Patent Owner’s contentions regarding the preamble and
`steps (A) through (G) recited in claim 1. To explain our analysis with
`respect to step (H), however, we discuss Petitioner’s contentions regarding
`Jones and certain of these steps, as well as the preamble.
`We first turn to the preamble and steps (A), (B), and (E) recited in
`claim 1. The preamble of claim 1 recites 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. Ex. 1101, 15:7–10.
`Steps (A), (B), and (E) of claim 1 recite updating a database to indicate an
`assignment has been assigned to the field crew, notifying the field crew of
`the assignment, and retrieving and presenting a list of assignments to the
`field crew. Ex. 1101, 15:11–18.
`For the enterprise computer system and the at least one mobile field
`unit recited in the preamble of claim 1, Petitioner points to Jones’ BSCU and
`VCU, respectively. See, e.g., Pet. 20 (citing Ex. 1102, 10:52–64). For
`
`10
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`IPR2017-00743
`Patent 6,633,900 B1
`
`“work order assignment data,” also recited in the preamble of claim 1,
`Petitioner points to the route stop list. Id. at 19 (citing Ex. 1102, 9:41–64,
`17:63–18:22, 21:66–22:9, 33:39–34:4, Figs. 40–43; Ex. 1104 ¶¶ 67–70).
`Regarding steps (A), (B), and (E) of claim 1, Petitioner points to
`Jones’ teachings relating to maintaining and updating the route stop list and
`notifying and presenting the route stop list to the driver of vehicle 19,
`including those teachings summarized in the overview of Jones above. For
`instance, Petitioner points to Jones’ teachings of the BSCU maintaining a
`database with the driver’s route and updating the route list to add stops, e.g.,
`when a request to pick up a package is received. Id. at 24–26 (citing, e.g.,
`Ex. 1102, 12:27–31, 17:63–18:22, 26:1–15, 33:39–34:4). For notifying the
`field crew, Petitioner points to Jones’ teachings of an audible sound, such as
`a buzzer. See, e.g., id. at 26 (citing Ex. 1102, 21:62–22:3). For retrieving
`and presenting a list of assignments to the field crew, recited in claim 1,
`Petitioner points to Jones’ teaching of displaying stops along a driver’s daily
`route as illustrated, for example, with respect to Figure 42 of Jones,
`reproduced above. See, e.g., id. at 36 (citing Ex. 1102, Fig. 42).
`We next turn to steps (F) and (G) of claim 1, which recite displaying
`detailed assignment data for the selected assignment that is retrieved from
`the database in response to a selection by the field crew of an assignment
`from the list of assignments. Ex. 1101, 15:20–24. Petitioner points to
`Jones’ teaching of stops as corresponding to “assignments” recited in
`claim 1. Pet. 37 (citing Ex. 1102, 13:36–38, Figs. 11, 40–43).
`
`11
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`IPR2017-00743
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`
`With respect to displaying detailed assignment data, Petitioner
`contends:
`
`Jones also discloses that the VCU may display information
`related to the stop in text format (Fig. 40) or as a “map with
`highlighted roads to the next stop or actual directions.” (Ex. 1102
`at 9:41-46; Ex. 1104 ¶ 115.) Jones discloses that the “additional
`directions with or without map displays . . . can be activated by
`the drivers’ input . . . .” (Ex. 1102 at 22:25–38.)
`Given Jones’s disclosure of a driver interacting with the
`VCU to select items, such as a stop along the route stop list, and
`of providing additional directions with map displays based on
`the driver’s input, Jones teaches or would have at least rendered
`obvious retrieving the additional directions and map information
`in response to a driver selecting a stop from the list. (Ex. 1104
`¶ 116.) One skilled in the art further would have understood that
`the driver would have been able to make such a selection given
`Jones’s express disclosure of scrolling through the list and then
`pressing left or right on the control knob to make a selection. (Id.)
`It would have been obvious to one skilled in the art to retrieve
`and display the additional directions with map display to the
`driver, as expressly disclosed by Jones, because doing so would
`have assisted the driver in quickly and easily obtaining directions
`to the next stop location. (Id. ¶ 117.) One skilled in the art would
`consider the textual information and mapping of the stop to be
`“detailed assignment data.” (Id. ¶ 118.)
`Pet. 39 (emphases added). Accordingly, in its contentions for steps (F) and
`(G), Petitioner points to textual directions and map displays as
`corresponding to “detailed assignment data,” recited in claim 1.
`We now turn to step (H) in claim 1, which requires updating the
`detailed assignment data in response to field crew input identifying an action
`that was taken with regard to the assignment. Ex. 1101, 15:25–27.
`Petitioner contends:
`
`12
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`IPR2017-00743
`Patent 6,633,900 B1
`
`
`Jones discloses this feature. (Ex. 1104 ¶¶ 120–124.) Jones
`discloses drivers inputting information into the system via the
`VCU, as discussed above and shown in Figs. 11, 40-43. See
`supra Section VI.D.viii. These interactions allow the driver to
`notify the BSCU that an attempt to deliver a package was made,
`or that a stop should be rescheduled. (Ex. 1102 at 11:48–12:5;
`Ex. 1104 ¶ 120.)
`Pet. 40. Petitioner additionally cites Jones’ description of a driver actuating
`attempt to deliver switch 22 and reschedule stop switch 23. Id. at 40–41
`(citing, e.g., Ex. 1102, 11:48–12:5). Petitioner contends that Figure 43,
`“shows the result of updating the detailed assignment data based on a
`driver’s input identifying that the driver attempted delivery and the package
`was rescheduled, as denoted with ‘(AR)’ next to the rescheduled stop.” Id.
`at 41 (citing Ex. 1102, 9:59–65) (emphases added).
`Patent Owner contends “[a]s a matter of antecedent basis, the
`‘detailed assignment data’ in limitations (F) and (G) must be the same
`‘detailed assignment data’ in limitation (H).” Prelim. Resp. 18. Regarding
`Petitioner’s contentions that the driver’s attempted or rescheduled delivery
`input corresponds to updating detailed assignment data, Patent Owner
`contends “[b]ut the Petitioner does not argue that the route stop list is ‘the
`detailed assignment data’ from limitations (F) and (G).” Id. at 19.
`We agree with Patent Owner. The Petition identifies only Jones’
`directions and map as detailed assignment data with respect to steps (F) and
`(G). Pet. 37–40. For step (H), the Petition points to only Jones’ teaching of
`inputting attempted or rescheduled delivery information as detailed
`assignment data. Id. at 40–43. Petitioner makes no attempt to reconcile
`these disparate teachings. As such, Petitioner’s citation of two different sets
`of teachings from Jones for the same recited “detailed assignment data”
`
`13
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`IPR2017-00743
`Patent 6,633,900 B1
`
`represents a fatal inconsistency in Petitioner’s unpatentability contentions.
`More specifically, the Petition does not provide explanation or argument
`showing sufficiently that the directions and map information satisfies the
`requirements of step (H) or that the driver’s attempted or rescheduled
`delivery input satisfies the requirements of the steps (F) and (G). Id. at 37–
`43. Petitioner also relies on testimony of Dr. Lavian (see id. at 37–43 (citing
`Ex. 1104 ¶¶ 112–24)), but this testimony is substantially the same as
`Petitioner’s contentions and is deficient for the same reasons. Compare Ex.
`1104 ¶¶ 115–123, with Pet. 39–42.
`On this record, Petitioner has not introduced sufficient evidence and
`argument to show that Jones teaches updating the detailed assignment data
`recited in step (H) of claim 1. Thus, Petitioner has not demonstrated a
`reasonable likelihood that it would prevail with respect to claim 1 as obvious
`over Jones and Kaman.
`
`
`III. CONCLUSION
`In the instant proceeding, Petitioner has not established a reasonable
`likelihood that claim 1 is unpatentable.
`
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is not instituted for claim 1 of U.S. Patent No. 6,633,900 B1 in this
`proceeding.
`
`
`
`14
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`IPR2017-00743
`Patent 6,633,900 B1
`
`PETITIONER:
`
`Jeffrey A. Berkowitz
`Michael V. Young, Sr.
`Daniel Tucker
`Gracie Mills
`Alexander Boyer
`Bradford Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`jeffrey.berkowitz@finnegan.com
`michael.young@finnegan.com
`daniel.tucker@finnegan.com
`gracie.mills@finnegan.com
`alexander.boyer@finnegan.com
`bradford.schulz@finnegan.com
`
`
`
`PATENT OWNER:
`
`Andrew G. Heinz
`Kevin K. McNish
`DESMARAIS LLP
`aheinz@desmaraisllp.com
`kkm-ptab@desmaraisllp.com
`
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`15
`
`
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