UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE, INC.
`Petitioner,
`
`v.
`
`MAKOR ISSUES & RIGHTS, LTD
`Patent Owner
`_______________
`
`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`_______________
`
`Record of Oral Hearing
`Held: May 3, 2018
`________________
`
`
`
`
`Before Hyun J. Jung, Beverly M. Bunting, and Robert L. Kinder,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE, INC.
`Petitioner,
`
`v.
`
`MAKOR ISSUES & RIGHTS, LTD
`Patent Owner
`_______________
`
`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`_______________
`
`Record of Oral Hearing
`Held: May 3, 2018
`________________
`
`
`
`
`Before Hyun J. Jung, Beverly M. Bunting, and Robert L. Kinder,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL BERTA, ESQUIRE
`Arnold & Porter
`Three Embarcadero Center
`10th Floor
`San Francisco, CA 94111
`Michael_Berta@arnoldporter.com
`
`
`
`RICH BISENIUS, ESQUIRE
`MICHAEL HAWKINS, ESQUIRE
`Fish & Richardson
`3200 RBC Plaza
`60 South 6th Street
`Minneapolis, MN 55402
`bisenius@fr.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ARI JAFFESS, ESQUIRE
`RONALD ABRAMSON, ESQUIRE
`Lewis Baach Kaufmann Middlemiss, PLLC
`The Chrysler Building
`405 Lexington Avenue
`4th Floor
`New York, NY 10174
`Ari.jaffess@lbkmlaw.com
`
`
`
`The above-entitled matter came on for hearing Thursday, May 3,
`
`2018, commencing at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia.
`
`
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`2
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`
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE KINDER: -- Good morning everyone. I’m Judge Kinder and
`
`with me remotely today are Judge Jung and Judge Bunting and they’re both
`appearing remotely as you can see on your monitors. We’re calling today
`case Google, LLC versus Maker Issues & Rights Limited, Patent Owner.
`We have four proceedings today. We have IPR 2017-00815, 816 and 817
`involving Patent 6,480,783 and then the fourth proceeding is IPR 2017-
`00818 involving Patent 6,615,130.
`
`Before we begin today, I want to get a roll call of who will be
`representing each party. For the Petitioner, Google, could you stand please?
`
`MR. HAWKINS: Good morning, Your Honors. My name is Michael
`Hawkins from Fish & Richardson, lead Counsel for Google, LLC. With me
`today is my associate, Rich Bisenius, who will be speaking, and also
`Michael Berta, who will be also speaking.
`
`JUDGE KINDER: All right. Thank you.
`
`For the Patent Owner, Maker, could you please rise and give an
`appearance?
`
`MR. JAFFESS: Good morning, Your Honors. My name is Ari
`Jaffess from the firm of Lewis, Baach, Kaufmann Middlemiss representing
`the Patent Owner, Makor Issues & Rights Limited and with me today is Ron
`Abramson from my firm.
`
`JUDGE KINDER: Thank you.
`
`So as we stated in our hearing order, each party today will get 60
`minutes to present its arguments and I’ve marked that time on the wall and
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`I’ll keep my fellow judges up to speed on that countdown. Petitioner bears
`the ultimate burden of proof that the claims at issue in these proceedings are
`unpatentable. Therefore, the Petitioner will go first to present its case with
`regards to the challenged claims. Petitioner may reserve rebuttal time.
`
`If you could rise and just let me know what rebuttal time you want
`today.
`
`MR. BISENIUS: We would like to reserve 20 minutes rebuttal time.
`
`JUDGE KINDER: Twenty minutes? All right.
`
`I have a couple more things. The Patent Owner will argue its
`opposition to the Petitioner’s case after that and currently right now we don’t
`see a need for rebuttal time. If that changes, we might ask you a couple
`questions on -- but as it stands right now, you will not have any rebuttal
`time. Again, to remind you, no new evidence or argument should be
`presented during oral hearing.
`
`Because we have four proceedings today, if you’re referring to issues
`that involve only one proceeding, please identify that proceeding by the IPR
`number so we can keep a clean record. Some issues overlap, as you know,
`but there are a few that are specific to a given proceeding. So if we could
`identify that proceeding, it would be helpful when we go back into the
`record and review it. And also, because we have remote Counsel, please be
`very clear if you put something on your ELMO, what you’re referring to by
`exhibit number and page number. All right. At this time, if there are no
`other questions I will go ahead and turn it over to Petitioner.
`
`MR. BISENIUS: Good morning, Yours Honors. I’m going to
`address a few issues related specifically to the IPR 2017-00815 proceeding,
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`then my colleague, Mr. Berta, is going to address some issues that are
`global, to all four proceedings, and additional issues that are specific to the
`817 proceeding.
`
`With respect to the 815 proceeding, I’d like to talk about the recitation
`of predicted road section coefficients in Claim 1 of the ‘783 patent.
`Specifically, in the petition at page 7, Petitioner laid out construction for the
`term “road section coefficients” specifying that “road section coefficients are
`coefficients associated with road sections in a route search.” This
`construction was not dispute by Patent Owner.
`
` JUDGE KINDER: Do we offer an interpretation on that in our
`decision on institution?
`
`MR. BISENIUS: In the institution decision, I believe that the Board,
`at the time, found that construction was not necessary.
`
`JUDGE KINDER: Okay. Do you think it is necessary to decide this
`dispute before us?
`
`MR. BISENIUS: I don’t believe it’s necessary to decide the dispute
`here. I just wanted to point out that Patent Owner had not disagreed with
`Petitioner’s construction of “road section coefficient”.
`
`JUDGE KINDER: But they seem to take an implied construction
`now in their argument. Would you agree with that?
`
`MR. BISENIUS: Correct, which they framed as a construction-based
`on the term “predicted road section coefficients”. So, as you just mentioned,
`their implied construction indicated that the term “predicted” requires the
`coefficients to be dynamic or variable. Patent Owner provided no intrinsic
`evidence for this implied construction, no extrinsic evidence for this implied
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`construction and no definitions of the term “predict”.
`
`JUDGE KINDER: Let me ask one question, just a broad question.
`The specific limitation we’re looking at here has not been involved in any
`other proceeding; is that correct?
`
`MR. BISENIUS: Correct. This specific recitation is of all of the
`claims being challenged in both the first round of these IPRs and this round,
`is only found in Claim 1 of the ‘783 patent.
`
`JUDGE KINDER: All right. Please proceed.
`
`MR. BISENIUS: Patent Owner also tried to link the term
`“coefficients” to the term “empirical speed coefficients” found in the
`specification of the ‘783 patent implying that all coefficients seem to have
`all of the characteristics of the empirical speed coefficients. However, as
`laid out in the petition at page 7, there are at least five different types of
`coefficients listed in the ‘783 patent specification. Those are traffic volume
`coefficients, speed coefficients, empirical speed coefficients, theoretic speed
`coefficients and new time coefficients. None of these coefficients are
`identified as being “predicted” in the ‘783 specification.
`
`Additionally, the term “road section efficient” does not appear in the
`‘783 specification. Therefore, the term “road section coefficient” should be
`interpreted at least broadly enough to encompass --
`
`JUDGE KINDER: How do we read that apart from the claim as a
`whole? I mean, I’m trying to find the claim language. I want to make sure I
`get it right here, but I believe it’s “predicted,” right, as a --
`
`MR. BISENIUS: It is “predicated road section coefficients,” correct.
`
`JUDGE KINDER: So what does that modifier do for a claim
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`construction?
`
`MR. BISENIUS: So as we identified in the reply, the term “predict”
`simply means to foretell. And as Dr. Braasch testified in both his first and
`second declarations, and during his deposition, the predicted road section
`coefficients are simply known values, known road section coefficients that
`relate to a road section used to predict something in the future. That’s
`precisely what the road section coefficients identified in Xu and Matsumoto
`by Petitioner in the petition do. They predict some aspect of a road section
`in the future based on the known information.
`
`Specifically, in the petition, Petitioner identified that Xu discloses
`traffic conditions may be weighted in a plurality of ways using different
`weighting factors based on a number of different situations. Xu goes on to
`describe that the weighting factors are used as multipliers applied to link
`travel times.
`
`So here, Xu’s weighting factors are multiplicative factors, they’re
`coefficients, that relate to road sections, so they’re road section coefficients
`and they’re using an equation to predict what the traveling time will be. So
`therefore, they’re predicted road section coefficients. This is also taught by
`Matsumoto.
`
`Matsumoto describes changing way coefficients for cost-related
`variable parameters and one specific cost-related parameter identified in
`Matsumoto is mean required traveling time. So once again, it’s a
`multiplicative factor using a calculation to determine a cost of traveling a
`road section for a future planned road.
`
`But even if Patent Owner’s narrow definition of predicted road section
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`coefficient is adopted requiring that the road section coefficients be dynamic
`or variable, this is already taught both by Matsumoto alone, and by Xu
`alone, and by the combination.
`
`Pointing to Matsumoto alone, Matsumoto specifies that the mean
`travel time, also known as the mean required traveling time in Matsumoto, is
`a variable parameter. This is specified at column 1, lines 30 to 37 of
`Matsumoto.
`
`Matsumoto described other variable parameters which are also used in
`the equation, such as in column 2, lines 46 to 57; column 4, lines 12 to 33,
`several other areas of Matsumoto identified in the petition and the
`Petitioner’s reply refer to these various factors as variable parameters. So
`therefore, even if the road section coefficients must be variable as Patent
`Owner specifies, Matsumoto teaches this.
`
`One last point I would like to make on this issue is that in the
`combination of Matsumoto and Xu, as our expert Dr. Braasch testified,
`Matsumoto and Xu make a good combination because Xu describes how to
`gather this information, how to process it to identify specific information
`based on probe vehicles. Matsumoto gives an equation and algorithm for
`calculating a fastest route based on that information and so, therefore, they
`make a good combination.
`
`And specifically with respect to Matusmoto’s mean required traveling
`time, Matsumoto doesn’t give a lot of details on how that’s determined, but
`as we described in our petition, Bosita, looking at the combination and the
`suggestions that Matsumoto would give to the system of Xu, would have
`realized that a mean traveling time and average traveling time are the same
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
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`thing, and Xu gives plenty of details on how to calculate an average
`traveling time and actually specifies that the average traveling times are used
`to “predict the travel time for the link”.
`
`Additionally, these average travel times of Xu are dynamic or variable
`because they’re based on a sliding window. Xu gives an example of an
`eight-week sliding window and therefore, as time moved forward, older
`information and data will leave the sliding window and new information and
`data will enter therefore making these average travel times continually
`dynamic. Therefore, in the combination of Xu with Matsumoto the average
`travel times are dynamic and therefore, even under Patent Owner’s narrow
`definition, are predicted road section coefficients.
`
`Are there any questions regarding this term?
`
`JUDGE KINDER: I do not have any at this time.
`
`MR. BISENIUS: I’m going to turn the floor over to my colleague,
`Mr. Berta.
`
`JUDGE KINDER: All right. Thank you.
`
`MR. BERTA: Thank you, Your Honors. I’m going to -- there’s a
`couple of different issues that span different petitions and different
`proceedings that I want to briefly cover before covering the other major
`issue that’s in the ‘817.
`
`The first issue that I want to talk about is in the ‘815 proceeding and
`the ‘816 proceeding. Patent Owner has taken the position that a certain
`claim term that is otherwise not in dispute with respect to whether it is
`disclosed in the prior art is or is not subject to 112-6.
`
`JUDGE KINDER: Okay.
`
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
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`MR. BERTA: And on that issue, the --
`
`JUDGE KINDER: In looking back, this was somewhat spurred by
`
`our requesting additional briefing after, and I forget what phase we were in.
`I think it was after our decision on institution we ordered additional briefing.
`
`MR. HAWKINS: That’s right, Your Honor.
`
`JUDGE KINDER: Okay.
`
`MR. HAWKINS: Yes. It was after the second set of institutions and
`before the Patent Owner response in the second set of IPRs, and so that issue
`was in the separate briefing and then it also shows up in the Patent Owner
`responses with respect to (indiscernible).
`
`JUDGE KINDER: Well, yeah. In this proceeding they actually had
`the opportunity to incorporate that into the response.
`
`MR. HAWKINS: That’s right, Your Honor.
`
`JUDGE KINDER: All right. Go ahead.
`
`MR. BERTA: So the position is that inside of one element of the ‘783
`patent, both Claim 1 of the ‘783 patent and then also Claim 4 of the ‘783
`patent there’s the same language and it is -- the element, it says, is statistical
`application for, and then as they characterize it, there’s three things that
`happen in there. Three functions they say: collecting structured GPS data,
`computing individual’s statistical travel time estimates (regular times) for
`predetermined roads, and showing the results.
`
`The position here is that this language with respect to a statistical
`application in the ‘783 and this term in both of these claims is subject to
`112-6, but that the exact same language in the ‘818 proceeding on the ‘130
`patent is not subject to 112-6.
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
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`JUDGE KINDER: I did find that a little bit confusing, but they seem
`
`to differentiate based upon what they see, I think, as additional description
`or function that differentiates those two claims.
`
`MR. BERTA: Yes.
`
`JUDGE KINDER: It was a little confusing, so.
`
`MR. BERTA: And I just want to -- I mean, I don’t -- people take
`positions that they take for whatever reasons that they take it, but I believe
`that that distinction between the language in the ‘130 patent, for example, in
`Claim 6 which is at issue in the ‘818 proceeding. So in Claim 6 of the ‘818,
`it starts out with the same words, “statistical application,” that they take the
`position as a nonce word in the ‘783 but don’t take that position in the ‘130
`patent.
`
`Then it has the exact same language “computing individual statistical
`travel time estimates (regular times) for predetermined roads.” So it’s
`exactly identical language. And then when you go to the back of that
`element, there is other language, right. It says -- it goes on to say after a
`comma, “The statistical application periodically updating the statistical data
`using statistical criteria for determining volumes of data necessary for
`obtaining valid and liable estimates,” which is fine, but that language doesn’t
`directly modify this second part of the first phrase first.
`
`And then second, if you go back to the ‘783 patent, the -- virtually
`identical language appears in the claims of the ‘783 patent. It’s just another
`element as opposed to a continuation of that element. So the ‘783, Claim 1,
`for example, goes on to say, after it says, “statistical application for this
`computing individual statistical travel times,” it says statistical means
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
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`application for the same thing, “periodical updating of the said statistical
`data using statistical criteria for determining volumes of data necessary for
`obtaining valid and reliable estimates.”
`
`So if the position is that that language somehow provides structure for
`this part of that element in the ‘130, which is apparently the position because
`that’s what they say in the Patent Owner response for ‘818, then that same
`virtually identical language in the ‘783 Claim 1 and Claim 4 also then would
`provide structure.
`
`In any event, so I don’t think that there is a principle basis to
`distinguish between the two and as the Board probably recalls, in the prior
`set of proceedings that exact same language with respect to the ‘130 patent
`in the ‘536 proceeding was found to be not necessary to construe on the
`basis that everyone had agreed that this exact same language was not subject
`to 112-6, and I would say that that decision is the same decision here
`because it’s the exact same language from the prior proceedings and it is not
`in dispute with respect to the prior art, so there’s no need to construe it here
`again.
`
`JUDGE KINDER: Let’s clarify that. Is there any argument by the
`Patent Owner that the prior art you relied upon doesn’t teach that particular
`statistical application for a limitation?
`
`MR. BERTA: There is no argument that has been put forward by a
`Patent Owner on that issue.
`
`JUDGE KINDER: Do we have a duty if -- to, especially in this
`situation where the presumption of means plus function is not evoked, do we
`have a duty to look at every claim limitation that’s not disputed?
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
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`MR. BERTA: You do not. Under Federal Circuit law and Vivid
`
`Technologies, for example, you do not need to construe claim terms that
`otherwise are not in dispute and not necessary for resolving the proceeding.
`
`And even -- let me say -- so absolutely you don’t. I think that is
`consistent with what happened in the ‘130 --
`
`JUDGE KINDER: I think the issue too comes to a -- comes down to
`our regulations that actually require Petitioner to have a burden to identify
`means plus function limitations.
`
`MR. BERTA: Yes.
`
`JUDGE KINDER: So there’s a little -- I think there’s a little bit of
`confusion in our own jurisprudence on how we examine that and it’s a tricky
`situation when you don’t have a presumption, especially for this limitation,
`what our duty is and where we ensure that takes place, so if you can
`expound on that a little bit.
`
`MR. BERTA: Sure, and I think that that’s right. In a petition,
`certainly to the extent there is means plus function presumed language,
`Petitioner should address that with respect to that issue. Here, there is no
`such presumption, so there’s no need to have addressed this language in the
`petition. I think then the issue becomes if someone raises it, this is similar to
`what happened in the last set of petitions in round one, if there is a raising of
`an issue of potential 112 then you’re going -- you should address is one way
`or the other post-petition and that’s what we have done, and they have done
`here.
`
`And so it doesn’t necessarily modify what the contents of the petition
`are once someone has raised that issue, but because here we had -- there is a
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`
`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`presumption that it is not, therefore there’s nothing infirm about the petition
`itself. And then when you go through and do the analysis of the issue as this
`Court did with respect to the ‘130 patent in the prior set of proceedings, you
`can then make that decision on the basis of the sum total of the record of the
`trial where here there is a presumption. The presumption obtains. There is
`no evidence to overcome the presumption with respect to this language
`especially in light of the fact that they had taken a directly contrary position
`with respect to the same language in the ‘130.
`
`JUDGE KINDER: When you say there’s a presumption, there’s a
`presumption that it is not subject to 112-6?
`
`MR. BERTA: Correct. Yeah. I’m sorry, Your Honor.
`
`JUDGE KINDER: All right. If I can ask, the limitation below that of
`Claim 1, for example, of the ‘783 patent has the words “means for”. It says,
`“statistical means application for”.
`
`MR. BERTA: Yes.
`
`JUDGE KINDER: I believe you took the position that that was not
`invoking the presumption of 112-6?
`
`MR. BERTA: Yes, Your Honor.
`
`JUDGE KINDER: But the Patent Owner took the position that, well,
`it does say “means for” and it provokes a presumption, but that presumption
`is overcome. I believe the Patent Owner took that position.
`
`MR. BERTA: That is not my recollection of the position that they
`took.
`
`
`
`JUDGE KINDER: Okay.
`MR. BERTA: Let me just make sure because my recollection of the
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
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`position that the Patent Owner took is the word “means” there, as -- which is
`similar to the position that we took, that “means” is “means” as in an
`average means --
`
`JUDGE KINDER: Okay. So I reversed --
`
`MR. BERTA: -- not the word “means”.
`
`JUDGE KINDER: -- your positions?
`
`MR. BERTA: What’s that?
`
`JUDGE KINDER: Did I mix your positions up?
`
`MR. BERTA: Oh, no. I think we both took the same position that for
`“statistical means application for,” that that -- there is no presumption of
`112-6 because that’s actually not really the words “means for”.
`
`JUDGE KINDER: So when --
`
`MR. BERTA: Both Patent Owner and Petitioner.
`
`JUDGE KINDER: So this is one of the weirder situations where
`“means” is actually referring to an averaging function?
`
`MR. BERTA: Correct.
`
`JUDGE KINDER: Okay. So I don’t see a dispute then between the
`parties on that as you go forward --
`
`MR. BERTA: Yes, Your Honor.
`
`
`JUDGE KINDER: -- I see, at least tentatively, no reason we
`would want to address it.
`
`MR. BERTA: Yes, Your Honor.
`
`JUDGE KINDER: Okay.
`
`MR. BERTA: Yes.
`
`JUDGE KINDER: Go ahead.
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`MR. BERTA: Okay. Then with respect to the 112-6 issue, the only
`
`other thing I wanted to point out is that were the Board inclined to look at
`this issue, you get to the same result because there is no dispute with respect
`to whether or not the element in question in the ‘815 and the ‘816 of Claim 1
`and Claim 4 of the ‘783 patent is or is not in the prior art. There’s no
`argument that it isn’t in the prior art that was put forward in the grounds in
`both of those proceedings, first.
`
`And second, as Dr. Braasch also clarifies in his reply declarations, the
`-- any potential -- the -- first of all, it’s clear from the language there that it
`is, to a person of scaling the art, that it means averaging so that there is
`sufficient structure actually in the claim element itself or one to decide it was
`112-6. And then second, that the averaging which is the subject of the ‘783
`specification that he points to where that is with respect to this claim
`element, that same structure is in, or function, is in the act, is in the prior art
`itself.
`
`So if you walked through the entire analysis anyway, you still get to
`the same result. That it’s still the same disclosure, the same act in the prior
`art that is being offered here. But I would submit, because it is already the
`same language, it has already been decided not to be necessary to be
`construed. Everyone has agreed that it is not 112-6 for purposes of the ‘130
`and there is no principle distinction between the language of the ‘130 and the
`‘783 on this issue, that it is not a term necessary to be construed as
`(indiscernible).
`
`JUDGE BUNTING: Counselor? Counselor, excuse me.
`
`MR. BERTA: Yes?
`
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`JUDGE JUNG: Can you clarify for me? Looking at the ‘783 patent,
`
`it calls out a “statistical application for” and “statistical means application
`for”. Is that the same program or are those two different ones?
`
`MR. BERTA: I think in the -- so in the way in which it ends up
`operating, the statistical application that then talks about computing
`individual statistical travel time estimates is, by way of averaging, which is
`why a person of skill in the art would understand as Dr. Braasch testified and
`a statistical means application, that means signifies averaging. It’s means as
`in an average, not means for means. And so that is the same -- it’s the same
`function and act for both of those of averaging which is confirmed by the
`word “means” in the second statistical means application.
`
`JUDGE BUNTING: And so are we --
`
`MR. BERTA: If that answers your question.
`
`JUDGE BUNTING: Well, are we talking about two different
`essential programs or is it one statistical program?
`
`MR. BERTA: One statistical program.
`
`JUDGE BUNTING: In other words -- it’s one statistical program and
`that --
`
`JUDGE KINDER: Or could we --
`
`JUDGE BUNTING: Or could it be two different ones? And I’m just
`comparing to the ‘130 patent where they just talk about a statistical
`application and they don’t differentiate between statistical application and
`statistical means application.
`
`MR. BERTA: Yeah, and I think it can be one application in the ‘783.
`
`JUDGE BUNTING: All right. And do they say that in the
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`specification anywhere?
`
`MR. BERTA: It is the same application that is being referenced
`because it is the same thing that does -- the act is averaging different time
`values and the link travel time to come to a statistical travel time estimate
`and that act is the same exact act with respect to these issues.
`
`Now, the periodical updating which is part of what is in the second
`statistical means application is a further act there where you make the
`decision as to how you change the averages that go on, but it’s all basically
`performed by the same application. So there’s actually doing the statistical
`travel time estimates and then you go on and do the updating which is what
`the rest of that element in the ‘130, or the -- basically the second element in
`the ‘783 do.
`
`JUDGE BUNTING: Thank you.
`
`MR. BERTA: Thank you, Your Honor.
`
`Okay. So after the 112-6 issue which is only extant in the ‘815 and
`the ‘816, the other common issue between the ‘816, ‘817 and the ‘818 is this
`issue of traffic jam. And with respect to the traffic jam issue --
`
`JUDGE KINDER: Can we talk procedurally first?
`
`MR. BERTA: Yes.
`
`JUDGE KINDER: I think we have time. There were a prior round of
`cases involving traffic jam limitation with respect to the Xu reference. Did I
`say that correctly?
`
`MR. BERTA: Xu. I say Xu. I don’t know.
`
`JUDGE KINDER: Xu? Okay. With respect to the Xu reference, and
`we ruled against Patent Owner, I believe, in those prior rounds of cases.
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`Case IPR2017-00815 (Patent 6,480,783 B1)
`Case IPR2017-00816 (Patent 6,480,783 B1)
`Case IPR2017-00817 (Patent 6,480,783 B1)
`Case IPR2017-00818 (Patent 6,615,130 B2)
`
`MR. BERTA: Yes, Your Honor.
`
`JUDGE KINDER: Those prior round of cases, I believe, were
`
`appealed by Google to the federal circuit.
`
`MR. BERTA: Correct, Your Honor.
`
`JUDGE KINDER: Has there been any cross-appeal filed?
`
`MR. BERTA: There has not.
`
`JUDGE KINDER: And has the time for filing a cross-appeal passed?
`
`MR. BERTA: It has.
`
`JUDGE KINDER: So are we bound by our prior determination with
`respect to that issue as a matter of issue preclusion?
`
`MR. BERTA: Yes, Your Honor. With respect to whether Xu
`discloses the traffic jam limitation, yes, you are.
`
`JUDGE KINDER: Is there any difference in that limitation between
`the claims that we prior decided in this and the claims we’re looking at
`today?
`
`MR. BERTA: Not for purposes of invalidation under the, for example
`MaxLinear, that the language is substantially similar. The arguments with
`respect to Xu on that are all identical by Patent Owner and so it is,
`essentially, the exact same element. So under MaxLinear, certainly for
`Claim 12, which is an issue in the ‘817 and then also the ‘783, but then also
`for all the other elements in the other claims at issue here, the Xu finding
`that Xu practices traffic jam as construed by this Board, there is collateral
`estoppel and Patent Owner is bound by that decision, and arguably --
`
`JUDGE KINDER: Okay. I’ll --
`
`MR. BERTA: -- can’t argue it.
`
`1
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