`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`
`
`FEDEX CORP.
`Petitioner
`
`
`
`v.
`
`
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`__________________
`
`
`
`Case IPR2017-00859
`
`U.S. Patent No. 9,047,586
`TITLE: SYSTEMS FOR TAGGED BAR CODE DATA INTERCHANGE
`Issue Date: June 2, 2015
`
`__________________
`
`DECLARATION OF DANIEL W. ENGELS, Ph.D
`
`
`
`
`
`
`
`
`Exhibit 2002 Page 1
`
`IV Exhibit 2002
`FedEx v. IV
`Case IPR2017-00859
`
`

`

`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`
`I. 
`INTRODUCTION ........................................................................................... 4 
`BASES FOR OPINIONS ................................................................................ 4 
`II. 
`III.  MATERIALS REVIEWED ............................................................................ 5 
`IV.  EDUCATION AND EXPERIENCE ............................................................... 5 
`V. 
`LEGAL STANDARDS ................................................................................... 9 
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 11 
`VII.  OVERVIEW OF THE ’586 PATENT .......................................................... 13 
`VIII.  OVERVIEW OF THE PRIOR ART ............................................................. 18 
`A.  American National Standard for Material Handling—Unit
`Loads and Transport Packages—Two-Dimensional Symbols,
`ANSI 10.8.3M-1996 (“ANSI”) ............................................................ 18 
`U.S. Patent No. 5,298,731 to Ett (“Ett”) ............................................. 20 
`Guide to Bar Coding with UPS For Customers Generating Bar
`Code Labels, Version III (“UPS”)....................................................... 22 
`IX.  A PRINTED SHIPPING LABEL IS NOT “AN ELECTRONIC
`DOCUMENT” ............................................................................................... 24 
`ETT DOES NOT TEACH “SENDING” OR “MEANS FOR
`RECEIVING” “AN ELECTRONIC DOCUMENT HAVING [OR
`COMPRISING] A PLURALITY A BAR CODES” ..................................... 26 
`A. 
`Ett’s “bit map” is not “an electronic document having a
`plurality of bar codes.” ........................................................................ 26 
`Ett’s “image of the code pattern” is not “an electronic document
`having a plurality of bar codes” .......................................................... 27 
`Ett’s printer is not a “means for receiving an electronic
`document comprising a plurality of bar codes” .................................. 29 
`XI.  A PERSON OF SKILL COULD NOT HAVE USED ETT’S
`SYSTEM TO PRINT ANSI’S OR UPS’S LABELS ..................................... 33 
`XII.  ETT TEACHES USING ONE BAR CODE INSTEAD OF A
`PLURALITY OF BAR CODES ................................................................... 36 
`
`X. 
`
`B. 
`C. 
`
`B. 
`
`C. 
`
`
`
`Exhibit 2002 Page 2
`
`

`

`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`XIII.  OTHER OPINIONS ...................................................................................... 38 
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 2002 Page 3
`
`

`

`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`I.
`INTRODUCTION
`
`I, Daniel W. Engels, a resident of Southlake, Texas over 18 years of age,
`
`
`
`
`
`
`hereby declare as follows:
`
`1.
`
`I have personal knowledge of all of the matters about which I testify
`
`in this declaration.
`
`2.
`
`Desmarais LLP retained me on behalf of Intellectual Ventures II LLC
`
`to provide my technical opinions and testimony relating to claims 7, 8, 12, 13, 16,
`
`18, and 19 of U.S. Patent No. 9,047,586 (“the ’586 patent”) I refer to those claims
`
`as the “challenged claims.” The full text of the challenged claims appears in
`
`Appendix A to my declaration.
`
`3.
`
`I am being compensated for my work in this proceeding and receiving
`
`reimbursement for expenses incurred in the course of my work. My compensation
`
`is not contingent in any way on either the opinions I have reached or the outcome
`
`of this case.
`
`II. BASES FOR OPINIONS
`4.
`I have reviewed and considered the documents and other materials
`
`listed below in Section III in light of my specialized knowledge provided by my
`
`education, training, research, and experience, as summarized in Section IV and
`
`described in detail in my CV, which is provided as Appendix B. My analysis of
`
`those materials, combined with the specialized knowledge that I have obtained
`
`
`
`Exhibit 2002 Page 4
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`over the course of my education and career, form the bases for my opinions in this
`
`
`
`declaration.
`
`III. MATERIALS REVIEWED
`5.
`I have reviewed and analyzed the parties’ papers and exhibits in this
`
`proceeding to date, including the ’586 patent, its prosecution history, and the
`
`exhibits cited by Petitioner. I have also reviewed and analyzed the exhibits cited in
`
`this declaration.
`
`IV. EDUCATION AND EXPERIENCE
`6.
`I received a Bachelor’s Degree
`
`in Electrical and Computer
`
`Engineering from the University at Buffalo in 1992. I received a Master’s Degree
`
`in Electrical Engineering and Computer Science from the University of California,
`
`Berkeley in 1995. And I received my Ph.D. in Electrical Engineering and
`
`Computer Science from the Massachusetts Institute of Technology in 2000.
`
`7.
`
`After obtaining my Ph.D., I remained at MIT, working in the
`
`Department of Mechanical Engineering’s Auto-ID Center first as a Program
`
`Manager, then as an Associate Director, and then the Director of Protocols. As the
`
`third member of the team that formed the Auto-ID Center, I was responsible for
`
`developing an Automated Identification and Data Capture (“AIDC”) technology
`
`agnostic architecture that connects physical objects to the Internet. The basic
`
`architecture that we developed in 1998 and 1999 became the EPC System under
`
`
`
`Exhibit 2002 Page 5
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`the Auto-ID Center, and it was usable with any AIDC technology that carried an
`
`
`
`Electronic Product Code.
`
` The Electronic Product Code (“EPC”) is an
`
`identification scheme integrated with the Global Trade Item Number (“GTIN”)
`
`scheme that may be represented in alpha-numeric type, bar codes, or binary storage
`
`in electronic memory such as in a Radio Frequency Identification (“RFID”) tag.
`
`As Director of Protocols, I was responsible for leading the research and
`
`development of RFID standards, protocols for their use, and compliance and
`
`compatibility tests for systems developed to those standards.
`
`8.
`
`From October 2003 through June 2005, I was the Director of Research
`
`of the Auto-ID Labs in the MIT Department of Mechanical Engineering. In this
`
`role, I was responsible for setting all research directions, which included
`
`substantial research into various aspects of RFID technology and support for the
`
`development of EPC System standards within EPCglobal, part of GS1. The
`
`primary RFID research dealt with the Reader Collision Problem, UHF tag antenna
`
`designs, tools for RFID use, the EPC System, RFID use in supply chains, and
`
`regulatory impacts of and on RFID. The primary standards support included
`
`leading the development of the EPC Gen2 RFID standard and supporting the
`
`continued development and adoption of EPC standards including the EPC code
`
`itself.
`
`
`
`Exhibit 2002 Page 6
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`9.
`In June 2005, I founded the MIT Healthcare Research Initiative
`
`
`
`(“HRI”) to investigate the use of RFID technologies to improve patient safety. I
`
`served as Director of the HRI until June 2006.
`
`10. From June 2006 through August 2009, I was an Associate Professor in
`
`the Department of Electrical Engineering at the University of Texas at Arlington
`
`and I served as the Director of the Radio Frequency Innovation and Technology
`
`Center, where I led a team in the research and development of innovative radio
`
`frequency based technologies, devices, and systems. I also developed RFID
`
`engineering courses and a graduate-level curriculum in RFID.
`
`11. From August 2009 through August 2012, I was the Chief Technology
`
`Officer for Revere Security, where I lead research, development, and technical
`
`strategy, focusing on secure RFID standards development and developing technical
`
`partnerships with RFID and other wireless sensor companies.
`
`12.
`
`In October 2013 I co-founded Vattaca, LLC dba VerifyItNow. I led
`
`the initial product design and implementation of the VerifyItNow system used to
`
`automatically authenticate items tagged with either a bar code or an RFID tag. I
`
`architected and led the development of the systems architecture to support the
`
`authentication process, and I defined the data encoding used within the bar code
`
`and within the RFID tag for authentication purposes.
`
`
`
`Exhibit 2002 Page 7
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`13. Since August 2010, I have been at Southern Methodist University,
`
`
`
`first as a Visiting Fellow and then as an Associate Professor in the Computer
`
`Science and Engineering Department and Co-Executive Director of the Master of
`
`Science in Data Science program. I am now the Director of the Master of Science
`
`in Data Science program and am located in the Office of the Provost. Throughout
`
`this time, I have been involved in the study of AIDC and Internet of Things
`
`(“IoT”) technologies such as RFID and wireless sensor networks.
`
`14.
`
`I am also the Founder of Dragon Associates, LLC, a consulting firm
`
`focused on expert consulting for patent litigation, patent strategy, strategic
`
`consulting, system architectural consulting, and application consulting for RFID
`
`systems and technologies. In my work as an expert consultant, I have experience
`
`with patents related to bar code technologies and systems utilizing those
`
`technologies.
`
`15.
`
`I am a named inventor on six issued United States patents. As one
`
`example, I am a named inventor on U.S. Patent No. 7,765,253, titled “Object
`
`Name System.” Another example is U.S. Patent No. 8,509,427, titled “Hybrid
`
`Mode Cryptographic Method and System with Message Authentication.”
`
`16.
`
`I am an author of more than 90 peer-reviewed publications, many of
`
`which investigate the use of RFID and other tag tracking and automatic
`
`identification technologies. Examples include the following publications:
`
`
`
`Exhibit 2002 Page 8
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
` In K. Mun, A.B. Kantrowitz, P.W. Carmel, K.P. Mason, and
`Daniel W. Engels, “Active RFID System Augmented with
`2D Bar code for Asset Management in a Hospital Setting,”
`Proceedings of the IEEE International Conference on RFID
`2007 (IEEE RFID 2007), Grapevine, Texas, USA, March
`2007.
`
`
`
` Daniel W. Engels, Joseph Foley, James Waldrop, Sanjay E.
`Sarma and David Brock, “The Networked Physical World:
`An Automated Identification Architecture,” In Proceedings
`of the Second IEEE Workshop on Internet Applications
`(WIAPP’01), pages 76-77, 2001.
`In addition to the summary I have provided here, I describe my
`
`17.
`
`education and experience in greater detail in my CV, Appendix B.
`
`V. LEGAL STANDARDS
`18.
`Intellectual Ventures’ attorneys have informed me that Petitioner in
`
`this proceeding is asserting that the challenged claims are unpatentable because of
`
`obviousness. Intellectual Ventures’ attorneys have explained to me the legal
`
`standards that apply to Petitioner’s obviousness challenge. My understanding of
`
`those standards is described below. I am not an attorney, and I do not have formal
`
`training in the law regarding patents. I have used my understanding of the
`
`following legal principles set forth in this section in reaching my opinions.
`
`19.
`
`I understand that a claim is unpatentable as obvious if the differences
`
`between the claim and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having
`
`
`
`Exhibit 2002 Page 9
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`ordinary skill in the art to which the subject matter pertains at the time of the
`
`
`
`invention.
`
`20.
`
`I understand that obviousness is a question of law based on underlying
`
`factual issues. Those factual issues are (1) the scope and content of the prior art;
`
`(2) differences between the prior art and the claimed invention as a whole; (3) the
`
`level of ordinary skill in the art at the time the invention was made; and (4)
`
`objective indicia of non-obviousness.
`
`21.
`
`I understand that an obviousness case based on modifying or
`
`combining one or more prior art references requires the petitioner to show that a
`
`person of ordinary skill in the art would have had a reason to modify or combine
`
`those prior art references to achieve the claimed invention.
`
`22.
`
`I understand that exemplary reasons to combine or modify prior art
`
`references that may support a conclusion of obviousness include combining prior
`
`art elements according to known methods to yield predictable results, simple
`
`substitution of one known element for another to obtain predictable results; use of
`
`a known technique to improve similar techniques; combining elements in a way
`
`that would be “obvious to try” where there exists a finite number of identified,
`
`predictable solutions and a reasonable expectation of success; design incentives or
`
`market forces that would prompt variations of known work if those variations were
`
`predictable to a person of ordinary skill in the art; a teaching, suggestion, or
`
`
`
`Exhibit 2002 Page 10
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`motivation in the prior art to combine or modify prior art references to arrive at the
`
`
`
`claimed subject matter; and optimization of a recognized result-effective variable
`
`by a person of ordinary skill in the art if that optimization would be routine.
`
`23.
`
`I understand that there are also reasons that would prevent a person of
`
`ordinary skill in the art from modifying or combining prior art references.
`
`Examples of prior art references that a person of ordinary skill in the art would not
`
`combine or modify to achieve the claimed invention include prior art references
`
`that teach away from one another; prior art references that teach away from the
`
`claimed invention; prior art references whose combination or modification would
`
`change the principle of operation of either prior art reference; and prior art
`
`references whose combination or modification would render them inoperable or
`
`unsuitable for their intended purpose.
`
`24.
`
`I understand that in determining whether a person of ordinary skill in
`
`the art would combine or modify prior art references, the entire contents of each
`
`prior art reference must be considered, including parts of those references that
`
`would suggest against the proposed combination or modification.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`25. As discussed above, I have been informed by Intellectual Ventures’
`
`attorneys that obviousness is considered from the perspective of a person of
`
`ordinary skill in the art at the time of the invention.
`
`
`
`Exhibit 2002 Page 11
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`26.
`I understand that several factors are considered in determining the
`
`
`
`level of ordinary skill in the art, including the educational level of active workers
`
`in the field, the types of problems encountered in the art, the nature of prior art
`
`solutions to those problems, prior art patents and publications, the activities of
`
`others, the sophistication of the technology involved, and the rapidity of
`
`innovations in the field.
`
`27.
`
`I have been informed by Intellectual Ventures’ attorneys that
`
`Petitioner has used May 30, 2001 as the effective filing date of the ’586 patent.
`
`Accordingly, my analysis in this case is based on the perspective of a person of
`
`ordinary skill in the art as of around that date.
`
`28.
`
`I understand that Petitioner and Petitioner’s expert have asserted that a
`
`person of ordinary skill in the art at the time of the invention of the ’586 patent
`
`would have held at least a Bachelor’s Degree in Electrical Engineering, Computer
`
`Engineering, Supply Chain or Logistics Management, or the industry equivalent
`
`thereof, and approximately two or more years of industry experience in the field of
`
`bar code technology, or the academic equivalent thereof. Petitioner has asserted
`
`that such a person would have been familiar with the standardized bar code
`
`symbologies in use at the time of invention of the ’586 patent, including the
`
`American National Standards Institute’s efforts
`
`to standardize bar code
`
`symbologies.
`
`
`
`Exhibit 2002 Page 12
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`29. At this time, I do not make any assertions regarding whether
`
`
`
`Petitioner’s asserted level of skill in the art is correct. Rather, solely for purposes
`
`of this declaration, I have adopted Petitioner’s proposed level of skill in the art and
`
`applied it to my analysis.
`
`VII. OVERVIEW OF THE ’586 PATENT
`30. The ’586 patent is titled “Systems for Tagged Bar Code Data
`
`Interchange.” The application leading to the ’586 patent was filed on March 9,
`
`2012, with a provisional application filed on May 30, 2001.
`
`31. The ’586 patent is generally related to tagged bar code data
`
`interchange. (’586 patent, Abstract.) The novel bar code data interchange systems
`
`are used for creating, capturing, decoding, and caching electronic documents with
`
`(or without) tagged bar code information, along with parsing and stripping the bar
`
`coded data tags and inputting/storing the bar coded information. (Id.)
`
`32. The purpose of the ’586 patent invention is to provide systems for
`
`data interchange that avoid or minimize the use of expensive and sophisticated
`
`middleware between parties who may be using different computers, software,
`
`and/or operating systems. (Id., 1:48-59; 2:50-52.)
`
`33. The patent addresses that end goal by providing methods and systems
`
`that involve sending and receiving an electronic document having a plurality of bar
`
`codes to facilitate data interchange. (’586 patent, claims 7 and 16.)
`
`
`
`Exhibit 2002 Page 13
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`34. The patent describes a preferred embodiment, in which a user creates
`
`
`
`an electronic document having tagged bar code information, with each bar code
`
`encoding information and a data tag for that information, and that user sends the
`
`electronic document to another user. (’586 patent, 3:37-47; 5:9-14.) The first user
`
`sends the electronic document by posting it to a library or by emailing it to another
`
`user. (Id., 5:9-14.) Once the second user receives the document by accessing the
`
`library or his email with his computer, he can decode the bar codes in the
`
`document and use that information. (Id., 5:15-19; 5:40-48.)
`
`35. Figure 2 in the patent depicts an example of an electronic document
`
`having a plurality of bar codes, that is sent electronically by one user to another
`
`user according to the invention:
`
`
`
`Exhibit 2002 Page 14
`
`

`

`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`
`
`
`
`
`
`
`(’586 patent, Fig. 2.)
`36. The bar code data in the electronic document may be “tagged”—
`
`encoding respective data tags and data items. (’586 patent, claim 7). A style sheet
`
`file defines the data tags and data items. (Id., 3:40-41, Fig. 3.) A data tag is
`
`metadata, or data about the data, that provides additional information about the
`
`data so tagged. A data tag in the invention may be a short hand code (e.g., F01)
`
`that is used to compactly represent the metadata (e.g., First Name), and the style
`
`sheet file defines the relationship between the data tag and the metadata. A bar
`
`code in the invention encodes both the data tag and the data (referred to as the data
`
`item), where the data tag is specific to the data item. (Id.)
`
`
`
`Exhibit 2002 Page 15
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`37. Figure 3 depicts a style sheet file that is used to create tagged bar
`
`
`
`codes:
`
`
`
`(’586 patent, Fig. 3.)
`38. The ’586 patent provides examples of possible applications of the
`
`invention in which an electronic document having a plurality of bar codes is sent
`
`and received. One application involves “an electronic patient’s chart containing
`
`bar coded information . . . available on any computer display in the hospital.”
`
`(’586 patent, 7:37-40.) That application uses a network hard drive or local area
`
`network to make the electronic document available to the doctor “as he makes his
`
`daily rounds.” (’586 patent, 7:40-41.) Another application involves “an electronic
`
`
`
`Exhibit 2002 Page 16
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`prescription containing bar coded information . . . emailed to the pharmacy with
`
`
`
`bar coded information relating to the patient information and medication required.”
`
`(’586 patent, 7:54-58.)
`
`39. The recipient of the electronic document can scan the tagged bar
`
`codes, parse the data, send it to a data cache, and match the data to the appropriate
`
`fields in a second electronic document, such as the one depicted in Figure 7:
`
`(’586 patent, Fig. 7.)
`
`
`
`
`
`Exhibit 2002 Page 17
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`VIII. OVERVIEW OF THE PRIOR ART
`A. American National Standard for Material Handling—Unit Loads
`and Transport Packages—Two-Dimensional Symbols, ANSI
`10.8.3M-1996 (“ANSI”)
`I understand that Intellectual Ventures may challenge whether ANSI
`
`40.
`
`
`
`was publicly available before May 30, 2001 and whether it therefore qualifies as a
`
`“printed publication.” I was not asked to provide an opinion as to whether ANSI
`
`was publicly available or whether ANSI qualifies as a “printed publication.” For
`
`purposes of this declaration, I have limited my opinions to the technical disclosure
`
`of ANSI as understood by a person of ordinary skill in the art in 2001.
`
`41. ANSI provides a standardized format for data that is encoded in bar
`
`codes. (ANSI, § 1.1.)
`
`42. The standardized message format taught by ANSI includes a Message
`
`Envelope, which consists of a Message Header, one or more Format Envelopes,
`
`and a Message Trailer. (ANSI, § 4.) Each Format Envelope within the Message
`
`Envelope consists of a Format Header, Data formatted according to the rules
`
`defined for that format, and a Format Trailer. (Id.)
`
`43. ANSI defines a data stream that consists of ASCII characters drawn
`
`from the 128 possible values that may be encoded in 8 bits. (ANSI, Appendix A.)
`
`The beginning of the data stream is defined by the three character sequence “[)>”
`
`referred to as the Compliance Indicator. (ANSI, page 7.) The value of the
`
`
`
`Exhibit 2002 Page 18
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`Compliance Indicator was chosen “because it is unlikely that they will occur in
`
`
`
`message data.” (ANSI, Appendix C.) The data stream ends with the Message
`
`Trailer that is defined to be the End of Transmission character. (ANSI, page 7.)
`
`44. The data stream may contain data in one or more formats. A Format
`
`Envelope defines the start and end of the data in a given format. A Format Header
`
`and a Format Trailer are used to denote the beginning and the ending of the Format
`
`Envelope respectively. (ANSI, pages 8-14.) ANSI defines nine Format Headers,
`
`“01” through “09”, and reserves all other Format Header values. (ANSI, page 8.)
`
`Each Format Header defines the format of the data contained within the Format
`
`Envelope including required data and optional data. (ANSI, page 12.)
`
`45. ANSI teaches using a single bar code to encode all information.
`
`(ANSI, page 15; Figure 12; Figure 14.)
`
`46. ANSI teaches that when encoding data that exceeds “approximately
`
`1,500 alphanumeric characters” the resulting “concatenated symbols” must “be
`
`read in a single scanning sequence. Scanning an intervening symbol, either linear
`
`or 2D, will break the scanning sequence and may give unpredictable results.”
`
`(ANSI, page 21.)
`
`
`
`Exhibit 2002 Page 19
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`B. U.S. Patent No. 5,298,731 to Ett (“Ett”)
`47. U.S. Patent No. 5,298,731 to Ett is titled “Method for Printing and
`
`
`
`Reading for Orthogonal Bar Code Patterns.” The application leading to the Ett
`
`patent was filed on December 23, 1992 and the patent issued on March 29, 1994.
`
`48. Ett relates to a system for creating and printing a bar code pattern that
`
`encodes two different alphanumeric data streams into a single composite bar code
`
`representation. (Ett, Abstract.)
`
`49. Ett proposes two ways of creating and printing the bar code pattern:
`
`The data is converted into two streams of binary data if required
`and supplied to either a graphic generator which produces a
`graphic image of the combined bar code for transfer to the
`printer via a device driver, or alternatively may generate a
`series of escape codes and character codes to permit the printer
`to print the bars in the prescribed location, width, and height by
`means of a special character set stored in the printer.
`
`(Ett, 2:20-27.)
`
`50. Ett’s system uses a computer to generate and print a single bar code
`
`after converting character data and binary data into two binary streams, one
`
`representing bar widths and space widths and the other representing bar heights.
`
`(Ett, 4:16-31.) A “Bit Graphic Code Module or Printer Control code module” then
`
`“takes this stored bit data and generates a bit map representing the bar or space in
`
`the bar code.” (Ett, 4:31-34.)
`
`
`
`Exhibit 2002 Page 20
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`51. A person of ordinary skill at or around 2001 would understand that a
`
`
`
`“bit map” is a spatially mapped array of bits that corresponds to a digital image.
`
`Each bit in the array has a value corresponding to either black or white.
`
`52. Ett’s system stores the bit maps in memory until the combined bar
`
`code pattern is completed, “whereupon [the bit map] is sent as a graphic bit stream
`
`to the printer according to the format required by the printer.” (Ett, 4:40-44.)
`
`53. Ett describes the use of four printers: a thermal printer, a dot matrix
`
`printer, a laser printer, and an inkjet printer. (Ett, 1:44-46.)
`
` A thermal printer operates by heating an array of closely spaced
`
`thermal heads as thermal paper is passed over the heads. The
`
`thermal paper changes color to black when heated as it passes
`
`over the thermal heads. The heads are individually controlled
`
`as to when they produce sufficient heat to cause the thermal
`
`paper to become black.
`
` A dot matrix printer operates by printing one or more dots of
`
`ink from a typically movable print head as the paper passes
`
`under the print head. The dots are printed by having pins in the
`
`print head strike an ink-soaked ribbon against the paper. The
`
`print head typically contains an array of pins where each pin is
`
`individually controlled.
`
`
`
`Exhibit 2002 Page 21
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
` A laser printer operates by shining a laser in a specific pattern
`
`
`
`on a charged drum to create negatively charged areas on the
`
`drum to which positively charged ink is attracted. Heat is used
`
`to fuse the ink to the paper that is brought in contact with the
`
`drum.
`
` An inkjet printer operates by spraying one or more droplets of
`
`ink from a typically movable head as the paper passes under the
`
`print head. The droplets are sprayed from the inkjet print head
`
`and are gathered on the paper or other substrate. The print head
`
`is controlled as to when it sprays droplets and as to how many
`
`droplets it sprays.
`
`54. Ett’s printers receive data in a mapped form (i.e., a bit map). A
`
`printer driver installed on a computer may be used to transfer the bit map to the
`
`printer. Ett teaches that “[t]he printer produces the combined bar code output in
`
`paper form.” (Ett, 4:40-44.)
`
`55. Ultimately, Ett teaches a printing system designed to print one bar
`
`code at a time absent any text or additional information. (Ett, 5:61-6:8.)
`
`C. Guide to Bar Coding with UPS For Customers Generating Bar
`Code Labels, Version III (“UPS”)
`I was informed that Intellectual Ventures is challenging whether UPS
`
`56.
`
`was publicly available before May 30, 2001, and whether it qualifies as a “printed
`
`
`
`Exhibit 2002 Page 22
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`publication”. I was not asked to provide an opinion as to whether UPS was
`
`
`
`publicly available or whether it qualifies as a “printed publication.” For purposes
`
`of this declaration, I was asked to limit my opinions to certain aspects of the
`
`technical disclosure of UPS as understood by a person of ordinary skill in the art in
`
`2001.
`
`57. UPS is a document “for [UPS] customers generating bar code labels”
`
`to affix to packages. (UPS, 3.) That document contains exact specifications for
`
`customers to follow when they generate their own printed bar code and MaxiCode
`
`labels. (Id.) In providing those specifications, UPS describes the elements of a
`
`shipping label, including, for example, font sizes and proper placement of the
`
`different label elements. UPS’s specifications are intended to provide UPS
`
`customers with “consistency no matter what printing technologies you use or
`
`shipping conditions you face.” (UPS, 3.)
`
`58. Some of the elements on the UPS labels are bar codes. UPS provides
`
`information about different types of bar codes a UPS customer can use and the data
`
`they encode. (UPS, 8-15; 38-44.)
`
`59. Some of the elements on the UPS labels are printed letters and
`
`numbers. UPS provides information about the font, size, and spacing a UPS
`
`customer can use and any required characters. (UPS, 6-7; 12-16.)
`
`
`
`Exhibit 2002 Page 23
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`60. UPS provides a recommended ordering and arrangement of the label
`
`
`
`elements. (UPS, 5; 18.) UPS teaches that the elements may be contained on
`
`“separate labels” and the “[s]eparate labels must not overlap.” (UPS, 18.)
`
`IX. A PRINTED SHIPPING LABEL IS NOT “AN ELECTRONIC
`DOCUMENT”
`61. ANSI and UPS only describe printed documents with bar codes. (See
`
`generally ANSI and UPS.)
`
`62. For example, ANSI describes three applications that were considered
`
`in developing the standard: (1) Carrier Sortation and Tracking; (2) Shipping and
`
`receiving; and (3) Supporting documentation. (See ANSI, § 5.) For each of the
`
`three applications, ANSI describes technical issues associated with the printed bar
`
`codes. (See, e.g., ANSI, § 6.1.4, § 6.2.4, § 6.3.5.) Furthermore, ANSI only
`
`provides examples of printed documents. (See ANSI, § 7.)
`
`63. Similarly, UPS is intended for UPS customers using printed shipping
`
`labels to send packages. (See UPS, at 1 (“These specifications provide consistency
`
`no matter what printing technologies you use or shipping conditions you face.”),
`
`17 (describing the printed labels used by UPS customers).) Furthermore, UPS
`
`provides “Label Examples,” all of which are examples of printed shipping labels to
`
`be affixed to packages. (Id., at 18-35.)
`
`64. Consistent with the ’586 patent specification and the knowledge of a
`
`person of ordinary skill in the art in 2001, a printed document—like those
`
`
`
`Exhibit 2002 Page 24
`
`

`

`
`Case IPR2017-00859
`U.S. Patent No. 9,047,586
`
`disclosed in ANSI and UPS—is not an electronic document. (E.g., ’586 patent at
`
`
`
`1:19-27, 2:62-67, 3:22-23, 3:37-47.) A person of skill in the art would have
`
`understood that the ’586 patent specification distinguishes between a “printed
`
`document” and an “electronic document.” For example, the ’586 patent describes
`
`creating “electronic and/or printed documents with tagged bar coded information.”
`
`(’586 patent, at 1:19-27, 3:22-23; see also id. at 2:62-67 (distinguishing between
`
`printed documents and video displayed documents), 3:37-47 (same).)
`
`65. A person of ordinary skill in the art in 2001 would have also
`
`understood that merely generating an electronic file using “software” does not
`
`make it an electronic document, as expressly contemplated by the ’586 patent. For
`
`example, the ’586 patent describes “electronic generated documents” that “include
`
`tagged bar coded information”. (See, e.g., ’586 patent, at 1:57-67, 3:37-42, 4:39-