`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`PerdiemCo LLC
`
`Plaintiff,
`
`v.
`
`Industrack LLC et al.
`
`Defendants.
`
`Docket No. 2:15-cv-727-JRG-RSP
`
`
`
`
`
`
`DEFENDANTS’ MOTION FOR JUDGMENT ON
`THE PLEADINGS PURSUANT TO 35 U.S.C. § 112 ¶¶ 1 AND 2
`
`
`
`
`
`Page 1
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 2 of 31 PageID #: 843
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`STATEMENT OF THE ISSUE ...........................................................................................3
`
`PROCEDURAL AND FACTUAL BACKGROUND .........................................................3
`
`A.
`
`B.
`
`Procedural History ...................................................................................................3
`
`The Asserted Patents ................................................................................................4
`
`1.
`
`2.
`
`3.
`
`Continuation Applications and Claims to Priority .......................................4
`
`Patent Specification Disclosure ...................................................................6
`
`Prosecution History ......................................................................................9
`
`III.
`
`LEGAL STANDARDS .....................................................................................................11
`
`A.
`
`B.
`
`Motion to Dismiss Under Fed. R. Civ. P. 12(c) .....................................................11
`
`Requirements of 35 U.S.C. § 112 ..........................................................................12
`
`1.
`
`2.
`
`Written Description Requirement of 35 U.S.C. § 112 ¶ 1 .........................12
`
`Requirement under 35 U.S.C. § 112, ¶ 2 that the Claims
`Point Out and Distinctly Claim the Subject Matter which
`the Inventor Regards as the Alleged Invention ..........................................13
`
`IV.
`
`ARGUMENT .....................................................................................................................14
`
`A.
`
`The Asserted Claims Are Not Described in the Patent
`Specification, and Thus Fail to Satisfy the Written Description
`Requirement of 35 U.S.C. § 112 ¶ 1. ....................................................................14
`
`1.
`
`The common specification of the Asserted Patents, as well
`as the prosecution history of the Asserted Patents,
`unequivocally establish that the inventor required user
`defined zones and user defined events to be essential claim
`elements. ....................................................................................................15
`
`a.
`
`b.
`
`The inventor clearly indicates in the specification
`and prosecution history that user defined zones and
`user defined events are “required” elements of the
`alleged invention. ...........................................................................15
`
`The particular embodiments and applications of the
`alleged invention further evidence that user defined
`zones and user defined events are “essential” or
`“critical” elements to the purported invention. ..............................16
`
`
`
`i
`
`PerDiem Exhibit 2009, Page 2
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 3 of 31 PageID #: 844
`
`
`c.
`
`The original claims in the prosecution history
`further evidence that user defined zones and user
`defined events are “essential” or “critical” elements
`to the purported invention. .............................................................19
`
`2.
`
`The Asserted Claims do not include the “required” user
`defined zone and user defined event elements, and are thus
`invalid under the written description requirement as being
`broader than the specification disclosure ...................................................20
`
`B.
`
`The Asserted Claims Do Not Claim The Subject Matter Which The
`Inventor Regards as the Alleged Invention, and Thus Fail to
`Satisfy the Conditions of 35 U.S.C. § 112 ¶ 2. ......................................................24
`
`V.
`
`CONCLUSION ..................................................................................................................25
`
`
`
`
`
`
`
`
`
`ii
`
`PerDiem Exhibit 2009, Page 3
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 4 of 31 PageID #: 845
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Allen Eng’g Corp. v. Bartell Indus., Inc.,
`299 F.3d 1336 (Fed. Cir. 2002)................................................................................... 13, 24
`
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ......................................................................... 12
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) .......................................................................................................... 11
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) .......................................................................................................... 12
`
`Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
`935 F.2d 1555 ................................................................................................................... 12
`
`Centocor Ortho Biotech, Inc. v. Abbott Labs.,
`636 F.3d 1341 (Fed. Cir. 2011)............................................................................. 11, 12, 20
`
`Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc.,
`291 F.3d 1317 (Fed. Cir. 2002)................................................................................... 13, 15
`
`Gentry Gallery, Inc. v. Berkline Corp.,
`134 F.3d 1473 (Fed. Cir. 1998)........................................................... 13, 16, 17, 18, 19, 21
`
`Great Plains Trust Co. v. Morgan Stanley Dean Witter & Co.,
`313 F.3d 305 (5th Cir. 2002) ............................................................................................ 12
`
`ICU Med., Inc. v. Alaris Med. Sys., Inc.,
`No. SA CV 04-00689, 2007 WL 8081360 at *14 aff’d 558 F.3d
`1368 (Fed. Cir. 2009) .......................................................................... 13, 16, 17, 18, 19, 20
`
`In re Katrina Canal Breaches Litig.,
`495 F.3d 191 (5th Cir. 2007) ............................................................................................ 11
`
`Juxtacomm-Texas Software, LLC v. Axway, Inc.,
`No. 6:10-cv-0011, 2012 WL 7637197 (E.D. Tex. July 5, 2012)
`aff’d Juxtacomm-Texas Software, LLC v. Tibco Software, Inc., 532
`Fed.Appx. 911 (Fed. Cir. 2013) .................................................................................. 14, 24
`
`LizardTech, Inc. v. Earth Resource Mapping, Inc.,
`424 F.3d 1336 (Fed. Cir. 2005)................................................................................... 13, 20
`
`PerdiemCo LLC v. Geotab Inc.,
`No. 2:15-cv-00726-JRG-RSP ............................................................................................. 3
`
`
`
`iii
`
`PerDiem Exhibit 2009, Page 4
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 5 of 31 PageID #: 846
`
`
`PerdiemCo LLC v. GPS Logic LLC,
`2:15-cv-01216-JRG-RSP, D.I. 20 (E.D. Tex. Oct. 30, 2015) ............................................. 4
`
`PerdiemCo LLC v. Industrack LLC,
`2:15-cv-00727-JRG-RSP, D.I. 21 (E.D. Tex. Aug. 28, 2015) ........................................ 3, 4
`
`PIN/NIP, Inc. v. Platte Checmical Co.,
`304 F.3d 1235 (Fed. Cir. 2002)....................................................................... 12, 13, 15, 20
`
`Reiffin v. Microsoft Corp.,
`214 F.3d 1342 (Fed. Cir. 2000)......................................................................................... 13
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Systems, Inc.,
`242 F.3d 1337 (Fed. Cir. 2001)......................................................................................... 15
`
`Solomon v. Kimberly-Clark Corp.,
`216 F.3d 1372 (Fed. Cir. 2000)......................................................................................... 13
`
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998)....................................................................... 13, 16, 17, 21
`
`Turbocare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec.
`Co., 264 F.3d 1111 (Fed. Cir. 2001) ........................................................................... 13, 20
`
`Univ. of Rochester v. G.D. Searle & Co., Inc.,
`358 F.3d 916 (Fed. Cir. 2004)............................................................................... 12, 13, 20
`
`Voest-Alpine Trading USA Corp. v. Bank of China,
`142 F.3d 887 (5th Cir. 1998) ............................................................................................ 12
`
`Williams v Gen. Surgical Innovations, Inc.,
`178 F.Supp.2d 698 (E.D. Tex. 2002) ................................................................................ 13
`
`Rules and Statutes
`
`35 U.S.C. § 101 ............................................................................................................................... 1
`
`35 U.S.C. § 112 ....................................................................................................................... 13, 15
`
`35 U.S.C. § 112 ¶ 1 ......................................................................................... 1, 2, 3, 12, 21, 24, 25
`
`35 U.S.C. § 112 ¶ 2 ......................................................................................... 1, 2, 3, 13, 14, 24, 25
`
`Fed. R. Civ. P. 12(b)(6)................................................................................................................. 11
`
`Fed. R. Civ. P. 12(c) ........................................................................................................... 1, 11, 12
`
`
`
`
`
`
`iv
`
`PerDiem Exhibit 2009, Page 5
`
`
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`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 6 of 31 PageID #: 847
`
`
`Defendants Geotab Inc. (“Geotab”), Teletrac, Inc. and Navman Wireless North America
`
`Ltd. (collectively, “Teletrac”), and TV Management, Inc. d/b/a/ GPS North America, Inc. (“GPS
`
`N.A.”) (collectively, “Defendants”) respectfully move for judgment on the pleadings under
`
`Federal Rule of Civil Procedure 12(c) that each of the asserted patent claims, listed below, of
`
`U.S. Patent Nos. 8,223,012 (“the ’012 patent”), 8,493,207 (“the ’207 patent”), 8,717,166 (“the
`
`’166 patent”), 9,003,499 (“the ’499 patent”) and 9,071,931 (“the ’931 patent”) (collectively, “the
`
`Asserted Patents”) is invalid under the provisions of 35 U.S.C. § 112 ¶¶ 1 and 2, specifically the
`
`written description requirement and the “regards as his invention requirement.” This motion is
`
`case dispositive.1
`
`The common specification of the Asserted Patents and the prosecution history of the
`
`priority application2 clearly and unambiguously establish that Plaintiff’s alleged inventions are
`
`directed and limited to systems and methods for conveying object location information that
`
`include both (i) user defined zones and (ii) user defined events.3 Despite the specification’s clear
`
`and unambiguous description of the “inventions,” Plaintiff, later in continuation applications,
`
`expanded the “inventions” by presenting claims that do not include both of these “essential
`
`elements.” By doing so, Plaintiff improperly changed the “inventions” by overreaching the
`
`scope of the inventor’s purported contribution to the field of art and exceeding what is disclosed
`
`
`1 The Defendants have also moved separately under Rule 12(c) that each of the asserted patent
`claims is directed to non-patentable subject matter under 35 U.S.C. § 101. That motion is also
`case dispositive.
`2 Each of the Asserted Patents claims priority to, and is a continuation of, U.S. Patent
`Application No. 11/335,699, which was filed on January 20, 2006 and issued as U.S. Patent No.
`7,525,425. U.S. Patent No. 7,525,425 is not asserted in this case. As continuations, each of the
`Asserted Patents shares the same specification as the priority application. For purposes of this
`motion, all citations will be made to the specification for the ’012 patent.
`3 Defendants refer to “user-defined zones” and “user-defined events” to be inclusive of a user
`defining a zone and a user defining an event as steps in the method claims.
`
`
`
`1
`
`PerDiem Exhibit 2009, Page 6
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 7 of 31 PageID #: 848
`
`
`in the patent specification. Consequently, any asserted patent claim that does not include both a
`
`user defined zone and a user defined event is invalid for (1) failing to provide an adequate
`
`written description under 35 U.S.C. § 112 ¶ 1 of any embodiment that does not include both of
`
`these two essential features; and (2) failing to claim the subject matter that the alleged inventor,
`
`Darrell Diem, regarded as his invention, under 35 U.S.C. § 112 ¶ 2.
`
`Plaintiff currently alleges that Defendants infringe the following 31 claims4 (“the
`
`Asserted Claims”):
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claims 6, 9-10, 12, 23, and 27 of the ’012 patent
`
`Claims 17 and 19 of the ’207 patent
`
`Claims 4-5, 9-10, 16, 19, and 24 of the ’166 patent
`
`Claims 1, 4-5, 12, and 17 of the ’499 patent
`
`Claims 2, 6, 12-13, 16, 20, and 22-26 of the ’931 patent
`
`Every one of these Asserted Claims fails to claim both user-defined zones and user-defined
`
`events, and are thus invalid under the provisions of 35 U.S.C. § 112 ¶¶ 1 and 2.
`
`Tellingly, the five Asserted Patents issued from the second through sixth continuation
`
`applications claiming priority from Darrell Diem’s original January 2006 non-provisional patent
`
`application. In fact, since January 2006, Mr. Diem has filed 10 continuation applications, each
`
`one claiming priority from his 2006 application. And each new application expands and/or
`
`changes the scope of Mr. Diem’s original claimed inventions without providing any changes to
`
`his original description of his inventions. Not one of the Asserted Claims in these litigations
`
`4 Plaintiff originally asserted 89 claims against the Defendants, and reduced the number of
`Asserted Claims to 31 on January 22, 2016. The following claims were originally asserted, all of
`which also did not include both user-defined zones and user-defined events: ’012 patent, claims
`1-13, 18, 19, 22, 24, and 27; ’207 patent, claims 1-3, 10-22, 24, and 27; ’166 patent, claims 1-10,
`13-16, and 19-25; ’499 patent, claims 1, 3-6, 8, 11, 12, and 16-20; ’931 patent, claims 1-7, 12-16,
`20, and 22-26. Defendants reserve the right to renew their motion as to these claims should
`Plaintiff reassert them.
`
`
`
`2
`
`PerDiem Exhibit 2009, Page 7
`
`
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`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 8 of 31 PageID #: 849
`
`
`includes both essential elements set forth in his patent specification, namely the requirement of
`
`user defined zone and user defined events. Because the asserted claims do not find support in
`
`Plaintiff’s earlier priority applications, every one of those claims should be found invalid under
`
`35 U.S.C. 112 ¶¶ 1 and 2.
`
`I.
`
`STATEMENT OF THE ISSUE
`
`The issue for the Court is whether the Asserted Claims are invalid for failing to comply
`
`with the written description requirement of 35 U.S.C. § 112 ¶ 1 and the “regards as his
`
`invention” requirement of 35 U.S.C. § 112 ¶ 2.
`
`II.
`
`PROCEDURAL AND FACTUAL BACKGROUND
`
`A.
`
`Procedural History
`
`PerdiemCo LLC (“Perdiem”) brought separate actions against Defendants Geotab and
`
`Teletrac on May 15, 2015 alleging infringement of the ’012, ’207, ’166, and ’499 patents. (D.I.
`
`15). On July 2, 2015, Perdiem served Amended Complaints additionally asserting the ’931
`
`patent. (D.I. 17). The Complaints allege that the Asserted Patents are infringed, either directly
`
`or indirectly, by each of Defendants’ respective fleet management devices and/or software
`
`platforms. (See D.I. 17, ¶ 7). On August 28, 2015, the Court consolidated Defendants’ cases
`
`with others filed by Perdiem on May 15, 2015 for all pre-trial issues. PerdiemCo LLC v.
`
`Industrack LLC, 2:15-cv-00727-JRG-RSP, D.I. 21 (E.D. Tex. Aug. 28, 2015) (“First
`
`Consolidated Case”).
`
`Perdiem also filed separate Complaints on July 2, 2015 against GPS Logic, LLC, TV
`
`Management, Inc. d/b/a/ GPS North America, Inc., Forward Thinking Systems LLC, thingtech
`
`
`5 Citations are made to the pleadings filed in PerdiemCo LLC v. Geotab Inc., No. 2:15-cv-00726-
`JRG-RSP unless otherwise indicated.
`
`
`
`3
`
`PerDiem Exhibit 2009, Page 8
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 9 of 31 PageID #: 850
`
`
`LLC, and LiveView GPS, Inc. asserting the same five patents. On October 30, 2015, the Court
`
`consolidated these cases for all pre-trial issues. PerdiemCo LLC v. GPS Logic LLC, 2:15-cv-
`
`01216-JRG-RSP, D.I. 20 (E.D. Tex. Oct. 30, 2015) (“Second Consolidated Case”). The
`
`schedule entered for the Second Consolidated Case is approximately two months behind the
`
`schedule entered for the First Consolidated Case. Compare Industrack LLC, 2:15-cv-00727-
`
`JRG-RSP, D.I. 52 with GPS Logic LLC, 2:15-cv-01216-JRG-RSP, D.I. 34.
`
`The Plaintiff and Defendants in the First Consolidated Case exchanged initial
`
`infringement and invalidity contentions on September 16, 2015 and November 20, 2015.
`
`Plaintiff served supplemental infringement contentions on Geotab on November 13, 2015 and
`
`Geotab, in turn, served supplemental invalidity contentions in response on December 17, 2015.
`
`On December 17, 2015, pursuant to the Docket Control Order entered in this case, the parties
`
`exchanged proposals of claim terms to be construed. See PerDiemCo, LLC v. Industrack LLC et
`
`al., No. 2:15-cv-00727-JRG-RSP, D.I. 52 at 4. On January 7, 2016 the parties exchanged
`
`proposed constructions for the identified claim terms. See id.
`
`The parties in the Second Consolidated Case exchanged initial infringement and
`
`invalidity contentions on November 24, 2015 and January 19, 2016. The parties have yet to
`
`serve supplemental contentions or begin the claim construction process.
`
`B.
`
`The Asserted Patents
`
`1.
`
`Continuation Applications and Claims to Priority
`
`Each of the Asserted Patents claims priority to U.S. Provisional Appl’n No. 60/752,879,
`
`which was filed December 23, 2005. The applications that issued as the Asserted Patents are
`
`each continuation applications from U.S. Patent Appl’n No. 11/335,699 (“the ’699 application),
`
`which issued as U.S. Patent No. 7,525,425 (“the ’425 patent”) and is the earliest family member
`
`
`
`4
`
`PerDiem Exhibit 2009, Page 9
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 10 of 31 PageID #: 851
`
`
`of the Asserted Patents. However, Plaintiff chose not to assert the ’425 patent against any
`
`defendant in these consolidated actions. Instead, Plaintiff chose to assert only claims in its later-
`
`issued patents that do not require the essential elements of a user defined zone and user defined
`
`event.
`
`The ’699 application which issued as the non-asserted ’425 patent was filed January 20,
`
`2006. It issued on April 28, 2009. The respective filing dates of each of the applications that
`
`issued as each of the Asserted Patents, as well as their immediate claim to priority, are indicated
`
`on the faces of the Asserted Patents as follows:
`
`Table 3. Filing Dates and Claim to Priority of Asserted Patents
`Patent No.
`Application No.
`Filing Date:
`8,223,012
`13/437,725
`April 2, 2012
`8,493,207
`13/550,788
`July 17, 2012
`8,717,166
`13/948,785
`July 23, 2013
`9,003,499
`14/270,890
`May 6, 2014
`9,071,931
`14/620,913
`February 12, 2015
`
`Continuation of
`12/428,0086
`13/437,725
`13/550,788
`13/948,785
`14/270,890
`
`As indicated in the table, each application that issued as one of the Asserted Patents claim
`
`priority to the application immediately preceding it. As continuations, each of the Asserted
`
`Patents share a common specification (described hereinafter as “the common specification”). It
`
`is worth noting that the applications that matured into the Asserted Patents were filed anywhere
`
`from six to nine years after Mr. Diem filed the ’699 application. Despite these long delays, the
`
`common specification and description of the “inventions” remained unchanged.
`
`
`6 U.S. Patent Appl’n 12/428,008 (“the ’008 application”), which issued as U.S. Patent No.
`8,149,113 (“the ’113 patent”), was filed on April 22, 2009 and claims priority to the ’699
`application. The ’008 application issued as the ’113 patent on April 3, 2012. The ’113 patent,
`like the ’425 patent, has not been asserted against any defendant in these related litigations.
`
`
`
`5
`
`PerDiem Exhibit 2009, Page 10
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 11 of 31 PageID #: 852
`
`
`2.
`
`Patent Specification Disclosure
`
`The common specification “Abstract” states that the purported invention is directed to an
`
`“improved system and method for defining an event based upon an object location and a user-
`
`defined zone.” The “Field of the Invention” section of the common specification reiterates that
`
`the purported invention “relates generally to a system and method for defining an event based on
`
`the relationship of an object location and a user-defined zone and managing the conveyance of
`
`information related to such object location event among computing devices.” ’012 patent, col. 1,
`
`ll. 10-17. The “Summary of the Invention” section of the common specification clearly and
`
`unambiguously declares “[t]he invention requires defining a zone by the one or more users,” and
`
`“[a]n event is also defined in terms of a condition related to a relationship between an object
`
`location and the zone.” ’012 patent, col. 1, l. 67 – col. 2, l. 3.
`
`Further, the common specification innumerably describes “the present invention” in
`
`terms of user defined zones and user defined events. See, e.g., ’012 patent, col. 4, ll. 64-65 (“The
`
`present invention provides a system and method for defining an event …”); col. 8, ll. 56-58 (“In
`
`accordance with the present invention, one or more object location events can be defined relating
`
`a given user-defined zone to the location of a given object or objects”); col. 16, ll. 3-7 (“In
`
`accordance with the present invention, a user can define a user-defined zone on a map that can
`
`then be used to define an object location event relating object location information to user-
`
`defined zone information.”); col. 16, ll. 34-36 (“In accordance with the present invention, a user
`
`can define an object location event relating object location information to user-defined zone
`
`information.”); col. 17, ll. 32-33 (“The user-defined zones of the present invention can be
`
`defined by any user of the information sharing environment.”).
`
`The common specification, in fact, compares and distinguishes user defined zones and
`
`user defined events “of the present invention” with predefined zones and predefined events of the
`6
`
`
`
`PerDiem Exhibit 2009, Page 11
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 12 of 31 PageID #: 853
`
`
`prior art. See ’012 patent, col. 17, ll. 4-8 (“An important distinction exists between the user-
`
`defined zones and object location events of the present invention, and predefined zones (or
`
`domains) and predefined object location events that have previously been used in location-aware
`
`applications.”); col. 17, ll. 60-65 (“Thus, a key distinction between the user-defined zones of the
`
`present invention and predefined zones of previous location-aware applications is that the
`
`occurrence of object location events and the management of the conveyance of object location
`
`event information is determined by the user of the computing device and not by someone else.”).
`
`This key difference disappears when Mr. Diem later claims devices and methods that do not
`
`require both user defined zones and user defined events.
`
`In addition to clearly defining the “inventions” to require both user defined zones and
`
`user defined events, the common specification particularly describes only five embodiments,7
`
`each of which includes the steps “define a user-defined zone” and “define an object location
`
`event.” See, e.g., ’012 patent, col. 9, l. 59 – col. 10, l. 16 and FIG. 3 (describing “the first
`
`embodiment”) (“FIG. 3 illustrates a first embodiment of a method of the invention where object
`
`location event information is conveyed to computing devices …. A third step 306 is to define a
`
`zone. The zone can be defined by a user at any time. A fourth step 308 defines an object
`
`location event in terms of a relationship between information relating to the object location and
`
`user-defined zone.”); see also col. 10, l. 42-56 and FIG. 4 (describing “another embodiment”);
`
`col 11, ll. 16-44 and FIG. 5 (describing “a third embodiment”); col. 11, l. 61 – col. 12, l. 31 and
`
`
`7 The common specification describes only five broad embodiments, and includes more limited
`sub-embodiments within each of the five specific embodiments. These sub-embodiments also
`include the limitations of the broader embodiment in which it is included. See, e.g., ’012 patent,
`col. 11, ll. 16-60 (lines 16-44 describing a “third embodiment” and lines 45-60 describing “a
`further embodiment” which includes all limitations of the third embodiment, plus additional
`steps).
`
`
`
`7
`
`PerDiem Exhibit 2009, Page 12
`
`
`
`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 13 of 31 PageID #: 854
`
`
`FIG. 6 (describing “a fourth embodiment”); and col. 12, ll. 44-62 and FIG. 7 (describing “a fifth
`
`embodiment”).
`
`In addition to the specifically delineated “embodiments,” the common specification
`
`describes numerous applications of the alleged “present invention,” all of which include a user
`
`defined zone and user defined event. In one example, a mother is described as setting three user-
`
`defined zones relating to three locations in which a daughter is supposed to be during the day and
`
`defining events for each zone. See ’012 patent, col 9, ll. 14-58. In another example, three
`
`teenage girls in a mall are described defining a user defined zone and user defined event relating
`
`to a meeting place within the mall. See ’012 patent, col. 17, ll. 32-59. In yet another example, a
`
`traveling salesman is described as defining nine user defined zones for each of the nine sales
`
`calls he will make, and defining an event corresponding to each of the nine zones. See ’012
`
`patent, col 17, l. 65 – col. 18, l. 17. The final four examples described in the specification that
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`are allegedly “supported by the present invention” include (1) a parole officer identifying good
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`and bad locations for a parolee, and causing the parole officer to be notified if a given parolee
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`visits any of the locations (see ’012 patent, col. 18, l. 64 – col. 19, l. 3); (2) a pet owner defining
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`a zone that a pet is supposed to stay within, or the pet is not allowed, and an event for interaction
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`with such zones (see ’012 patent, col. 18, ll. 5-11); (3) a parent identifying zones in a
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`neighborhood that a child is allowed to play and not allowed to play, and notifications if the child
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`interacts with such zones (see ’012 patent, col. 19, ll. 12-19); and (4) hikers defining key
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`locations on a route and events associated with each of the locations (see ’012 patent, col. 19, ll.
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`20-26).
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`Finally, the common specification states that the “present invention is implemented by a
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`Location and Tracking software … whereby user location information is conveyed to contacts
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`
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`8
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`PerDiem Exhibit 2009, Page 13
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`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 14 of 31 PageID #: 855
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`based upon the location of the user relative to one or more zones defined by the user.” ’012
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`patent, col. 19, ll. 26-67. The common specification further describes the interfaces of the
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`Location and Tracking software for a user to define zones and events. See ’012 patent, col. 20, l.
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`1 – col. 22, l. 41 and FIGs. 8-23.
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`3.
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`Prosecution History
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`As mentioned above, each of the Asserted Patents is a continuation of the ’699
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`application which was filed on January 20, 2006 (hereinafter, “the original application”) and
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`issued as the ’425 patent. The original application was filed with thirty claims, all of which were
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`method claims that included the steps of “defining a zone by one of the plurality of users” and
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`“defining an object location event.” In response to a non-final rejection of all claims, the
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`applicant amended the method claims and added four method claims executed in a first
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`computing device, again, all of which included the steps of “creating a user defined zone” and
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`“defining an object location event.” Claim 1 of the originally filed application, as shown
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`amended (underline and strikethrough in original), is representative:
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`(Original) A method for conveying information relating to
`1.
`an object among a plurality of users of a plurality of computing
`devices, including a first user and a second user, the method
`comprising the steps of:
`
`defining a zone by said first userby one of the plurality of users,
`the zone having corresponding zone informationaccessible using a
`zone information access code;
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`defining an object location event in terms of a condition based
`upon a relationship between the zone and a location of the object,
`the location of the object having corresponding object location
`information accessible using an object location information access
`code, and the object location event having corresponding object
`location event information accessible using an object location
`event information access code;
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`
`
`9
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`PerDiem Exhibit 2009, Page 14
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`
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`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 15 of 31 PageID #: 856
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`associating an information access code with at least one of the
`object location information, the zone information, or the object
`location event information;
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`associating said information access code with the second user; and
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`conveying, to one or more of the plurality of users, the information
`relating to the object comprising at least one of the object location
`information, the zone information, or the object location event
`information based on the association of said information access
`code with the second user.
`
`Ex. A, ’425 patent prosecution history, Response to Non-Final Office Action (November 24,
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`2008), at p. 1.
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`Also in its response, and before addressing the merits of the non-final office action, the
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`applicant reiterated what he regarded as his invention:
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`Before addressing the merits of the Action, the applicant finds it
`beneficial to describe the various aspects of the invention, as
`recited by the above claims. One aspects of the present invention,
`as recited by the amended independent claim 1, relates to
`conveyance of information amongst a plurality of computing
`devices that are associated with users, including a first user and a
`second user. Under this aspect, a zone having a corresponding
`zone information is defined by the first user. Also defined is an
`object location event in terms of a condition based upon a
`relationship between the zone and a location of an object. …
`
`Another aspect of the present invention, as recited by the new
`claim 34, covers a method executed in a first computing device
`that is associated with a first user. The claimed execution method
`in the first computing device requires creating a user defined zone.
`The user defined zone comprises at least one point on a coordinate
`system that is associated with a map information source. An object
`location event is also defined in terms of a condition based upon a
`relationship between the user defined zone and a location of an
`object. …
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`Both aspect of the invention require 1) defining a zone by a first
`user, [and] 2) defining an object location event …
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`Id. at 8-9.
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`
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`10
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`PerDiem Exhibit 2009, Page 15
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`
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`Case 2:15-cv-00727-JRG-RSP Document 66 Filed 02/08/16 Page 16 of 31 PageID #: 857
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`U.S. Application No. 12/428,008 was filed as a continuation to the original application on
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`April 22, 2009, and issued as U.S. Patent No. 8,149,113 (“the ’113 patent”). The ’113 patent has
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`not been asserted in these litigations. And, like the earlier ’699 application, this application was
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`filed with thirty method claims, all of which re