Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`
`Entered: October 4, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TELULAR CORPORATION,
`Petitioner,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01007
`Patent 9,119,033 B2
`____________
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether inter partes review
`
`of U.S. Patent No. 9,119,033 B2 (“the ’033 patent”) should be instituted
`under 35 U.S.C. § 314. PerDiemCo LLC (“PerDiem”) is the owner of the
`’033 patent. Telular Corporation filed a Petition seeking inter partes review
`
`
`571-272-7822
`
`
`
`
`Paper 13
`
`Entered: October 4, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TELULAR CORPORATION,
`Petitioner,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01007
`Patent 9,119,033 B2
`____________
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether inter partes review
`
`of U.S. Patent No. 9,119,033 B2 (“the ’033 patent”) should be instituted
`under 35 U.S.C. § 314. PerDiemCo LLC (“PerDiem”) is the owner of the
`’033 patent. Telular Corporation filed a Petition seeking inter partes review
`
`
`
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`IPR2017-01007
`Patent 9,119,033 B2
`
`of claims 1–20 of the ’033 patent. Paper 2 (“Pet.”). PerDiem, in turn, filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”). After considering the
`Petition and Preliminary Response, we conclude that Telular has
`demonstrated a reasonable likelihood of proving that at least independent
`claim 1 is unpatentable. Because Telular has met the threshold for
`institution of “at least 1 of the claims challenged in the petition,” we
`authorize inter partes review (“IPR”) of all the challenged claims. 35
`U.S.C. § 314(a) (emphasis added).
`II. BACKGROUND
`Related Matters
`A.
`PerDiem filed a patent infringement action asserting the ’033 patent
`against Telular in the U.S. District Court for the Eastern District of Texas:
`PerdiemCo LLC v. Telular Corp., 2:16-cv-01408 (“the Texas action”).
`Paper 6 (PO Mandatory Notice). In the Texas action, PerDiem also asserts a
`number of related patents, each of which shares a similar specification with
`the ’033 patent. The related patents include U.S. Patent Nos. 8,149,113
`(“the ’113 patent”), 8,223,012 (“the ’012 patent”), 9,003,499 (“the ’499
`patent”), 9,071,931 (“the ’931 patent”), 9,319,471 (“the ’471 patent”), and
`9,485,314 (“the ’314 patent”). Ex. 2003.
`With our decision today, we will have instituted inter partes review
`(“IPR”) on all of the patents at issue in the Texas action. In addition to
`instituting review of the ’033 patent here, we have instituted review on the
`remaining patents in the following related proceedings: IPR2016-01061 (the
`’012 patent); IPR2016-01064 (the ’499 patent); IPR2016-01278 (the ’931
`patent); IPR2017-00968 (the ’314 patent); IPR2017-00969 (the ’113 patent);
`and IPR2017-00973 (the ’471 patent). TV Management, Inc., d/b/a GPS
`
`2
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`IPR2017-01007
`Patent 9,119,033 B2
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`North America (“GPS NA”) is the petitioner in the 1061, 1064, and 1278
`proceedings, while Telular is the petitioner in the 968, 969, and 973
`proceedings, as it is here.1
`B.
`The ’033 Patent
`The ’033 patent relates to a system for sharing location information
`about various groups of drivers or objects with a group of persons interested
`in tracking the drivers or objects. Ex. 1001, 1:1–4, 5:36–38. The interested
`persons are provided with user interfaces both for selecting from “one or
`more defined groups” and for receiving location information about the
`drivers/objects within the defined group. Id. at 6:57–7:5, 13:4–32. Global
`positioning system (GPS) technology is used to track the location of the
`group of drivers/objects. Id. at 5:64–6:56, Fig. 1. The location of the
`driver/object within the selected group is tracked relative to “user-defined
`zones,” and the driver/object’s tracked location is shared with the interested
`persons. Id. at 4:61–5:19, 16:13–24. The shared location information may
`also pertain to an “event,” such as when the tracked driver/object enters or
`leaves a zone. Id. at 8:47–9:4, 16:25–47. Anytime the tracked driver/object
`crosses a zone, an exit or entry alert is sent to the interested persons. Id. at
`19:41–44.
`The Challenged Claims
`
`C.
`
`
`Of the challenged claims, three are independent—claims 1, 6, and 11.
`These claims are similar in scope in that they require a system for sharing
`location information among a “first,” “second,” and “third” group, differing
`
`
`1 Telular is named as a real party-in-interest in the 1061, 1064, and 1278
`proceedings. Oral argument was held in those proceedings on
`September 12, 2017.
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`3
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`IPR2017-01007
`Patent 9,119,033 B2
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`mainly in the definition of the “group.” Claim 1 relates to groups of
`“drivers”; claim 6 to groups of “mobile devices”; and claim 11 to groups of
`“objects.” Claim 1 is representative:
`1.
`A system for sharing information about a group of
`drivers, the system comprising:
`one or more servers capable of communicating with a
`plurality of mobile devices, each mobile device is associated
`with at least one location information source that provides
`location information for the mobile device;
`the one or more servers configured to:
`store information for:
`a first group of mobile devices associated
`with a first group of drivers;
`a second group of mobile devices associated
`with a second group of drivers; and
`a third group of mobile devices associated
`with a group of individuals interested in
`locating a driver;
`wherein the information includes a phone
`number for each mobile device in each
`group;
`provide one or more interfaces for a driver to
`select one of the groups of drivers;
`receive a request from a driver to join one of the
`groups of drivers;
`check the request before adding the driver to the
`requested group of drivers;
`provide one or more interfaces for an individual to
`obtain information about a group of drivers, where
`the one or more interfaces:
`allow the individual to select one of the first
`group of drivers or the second group of
`drivers;
`
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`4
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`IPR2017-01007
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`provide a map showing streets of a city,
`location of the individual, and location of
`one or more drivers in the selected group of
`drivers; and
`allow the individual to use the map to set a
`location;
`receive location information for at least one driver
`in the selected group of drivers;
`compare the location information for the at least
`one driver in the selected group of drivers with the
`location to determine whether to send an alert to
`the individual’s mobile device phone number; and
`cause the alert to be sent to the individual’s mobile
`device phone number.
`Ex. 1001, 22:43–23:14 (emphases added).
`D.
`The Asserted Grounds of Unpatentability
`Telular raises four grounds in challenging claims 1–20 of the ’033
`patent—first, that claims 1–20 are anticipated by Phillips2; second, that
`claims 6–20 are anticipated by Haney3; third, that claims 1–5 would have
`been obvious over Haney; and, finally, that claims 1–20 would have been
`obvious over Haney and Fast.4 Pet. 7. In further support, Telular relies on
`the declaration of Dr. Stephen Heppe, an expert witness retained by Telular
`for purposes of this proceeding.5 Ex. 1018.
`
`
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`
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`2 U.S. Patent No. 7,848,765 B2 (Ex. 1007, “Phillips”).
`3 U.S. Patent No. 7,353,034 B2 (Ex. 1005, “Haney”).
`4 U.S. Patent No. 7,327,258 B2 (Ex. 1003, “Fast”).
`5 Dr. Heppe has previously submitted declarations in the related
`proceedings.
`
`5
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`IPR2017-01007
`Patent 9,119,033 B2
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`
`III. ANALYSIS
`In this preliminary proceeding, we decide whether Telular has
`
`demonstrated a reasonable likelihood that “at least 1 of the claims
`challenged in the petition” is unpatentable. 35 U.S.C. § 314(a).
`A.
`Claim Construction
`Telular and PerDiem each propose constructions for “group of
`drivers” and “group of individuals” as recited in claim 1. Pet. 9–10; PO
`Resp. 20–22. Telular additionally requests a construction for the term
`“object.” Pet. 11. At this stage, we do not see that an express construction
`of any of these terms is necessary for our application of the prior art, as
`indicated by our analysis below.
`B.
`Grounds 2, 3, and 4—Invoking Haney for Anticipation and
`Obviousness
`Telular asserts two grounds that rely on Haney alone and a third
`ground that relies on Haney in combination with Fast. Pet. 7. We begin
`with Telular’s ground that claims 1–5 are unpatentable as obvious over
`Haney. Id. at 44–48. Our analysis of this ground focuses on independent
`claim 1, which requires, in general, three “groups” of people, where the first
`and second groups comprise people who are tracked, and the third group
`comprises people doing the tracking. Prelim. Resp. 1.
`More specifically, claim 1 contemplates an information sharing
`system for conveying location information among “a first group of drivers,”
`“a second group of drivers,” and “a group of individuals interested in
`locating a driver.” As claimed, an “interface” is provided that allows an
`individual in the third group to select one of the first or second groups of
`drivers and to use a map “to set a location” for “one or more drivers in the
`
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`6
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`IPR2017-01007
`Patent 9,119,033 B2
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`selected group.” The individual can then receive location information for
`“at least one driver in the selected group of drivers.” An “alert” is sent to the
`individual regarding the location of the driver relative to the set location on
`the map.
`In challenging claim 1 as obvious over Haney, Telular points to
`Haney’s application of location monitoring to “[c]orporations that wish to
`monitor the locations of their employees” or “[e]nterprise services such as
`work force management, fleet tracking, [and] emergency services.” Pet. 25
`(citing Ex. 1005, 17:56–57, 27:33–35). Similar to claim 1’s recitation of
`“sharing information” about the location of “a plurality of mobile devices,”
`Haney’s system uses “phones and other wireless devices” programmed with
`“location sharing” software. Ex. 1005, 2:22–33, 7:21–37; see also id. ¶ (54)
`(Title: “Location Sharing and Tracking Using Mobile Phones or Other
`Wireless Devices”). As for the specific recitation of sharing location
`information about “a group of drivers,” Telular argues that a skilled artisan
`would have inferred from Haney’s disclosure of “fleet tracking” that the
`system could be used for monitoring the location of drivers within a fleet of
`vehicles. Pet. 45–46. In support, Telular provides evidence of how a skilled
`artisan would have understood the term “fleet tracking” in the context of
`Haney’s disclosure. Id. (citing Exs. 1006, 1007, 1016). On the current
`record, that evidence persuades us that Haney’s disclosure of “fleet tracking”
`equates sufficiently to tracking the location of “a group of drivers,” as
`required by claim 1.
`Claim 1 further requires a “server” and “interface” that allows an
`individual interested in locating a driver “to select one of the first group of
`drivers or second group of drivers.” For teaching this limitation, Telular
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`7
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`IPR2017-01007
`Patent 9,119,033 B2
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`points to Haney’s disclosure of a Buddy Watch system in which multiple
`lists of “buddies” can be joined to form different mobile device groups, such
`as “Buddy Groups” and “Proximity Groups.” Pet. 27–29 (citing Ex. 1005,
`11:24–39, 7:16–19, Fig. 30); see also Ex. 1005, 7:10–37, 10:48–11:54.
`According to Haney, the Buddy Watch system includes a “server” for
`communicating with mobile devices having a “user interface” that “allow[s]
`mutual tracking and optional position mapping displays of members of
`groups.” Ex. 1005, 2:22–33 (emphasis added). In that regard, the Buddy
`Watch system permits businesses to “identify which service persons are
`closest to the next job and to provide personnel in the field to know the
`positions of their co-workers and to share their location with their co-
`workers.” Id. at 3:15–21.
`More specifically, in describing “Buddy Groups,” Haney teaches that
`users can monitor “each other’s position” (id. at 11:3–8) or monitor another
`user’s location “unidirectional[ly]” (id. at 17:65–18:5). See also id. at 8:31–
`38 (“The requested position update may be sent to everybody on a selected
`Buddy List or just a single person’s wireless device. In some embodiments,
`the position update is sent to some subset of persons on a selected Buddy
`List.”). And, with respect to “Proximity Groups,” Haney describes a user
`interface for defining members of various groups and setting up “map
`rooms” to view the locations of group members. Id. at 6:51–7:37, 25:10–32,
`Figs. 26–30. When a group member enters or exits a pre-defined zone, an
`alert is sent automatically to the user. Id.
`Notably, Haney describes the capability of selecting among multiple
`groups for tracking. For instance, Haney teaches that “users can change
`things on the fly in the field such as: adding groups and members.” Id. at
`
`8
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`IPR2017-01007
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`3:9–14 (emphasis added). To do this, Haney depicts a user interface “to
`select users or groups” (id., Fig. 26) for “mapping and requesting a position
`update” (id. at 6:51–59). According to Haney, “multiple lists [of workers]
`can be joined to form a group” and “entire groups may be enabled and
`disabled” by a “supervisor” for “tracking of a group of people.” Id. at 11:3–
`54. Those disclosures persuade us, at this stage, that Haney’s system allows
`a supervisor to organize drivers into groups and select among those groups
`for tracking. See Ex. 1018 ¶¶ 48–50. Thus, based on the current record,
`Telular demonstrates a reasonable likelihood that a skilled artisan would
`have understood Haney as describing a system for sharing location
`information about two different groups of drivers, with yet a third group
`having the capability to select one of the groups of drivers for tracking.
`PerDiem raises a single argument in response—“Haney does not
`disclose a member of one group tracking drivers in other groups.” Prelim.
`Resp. 36–37. We are not persuaded. As discussed above, Haney teaches a
`user interface that functions “to allow mutual tracking and optional position
`mapping displays of members of groups.” Ex. 1005, 2:22–27 (emphasis
`added). Haney further explains that workers “can be joined into a group and
`entire groups can be enabled or disabled” by a supervisor using a graphic
`user interface. Id. at 11:27–29 (emphasis added). More specifically, Haney
`explains that, once enabled, the groups are monitored and controlled by the
`supervisor on a user interface.
`Buddy Lists of Buffy [sic] Groups are a means to have a single
`icon, folder or some similar graphic user interface (GUI)
`mechanism or represent a list of people and enables single
`commands to turn on or turn off tracking of a group of people.
`If a folder is used for each Buddy Group, a drop down list
`showing the specific names and locations of each person on the
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`IPR2017-01007
`Patent 9,119,033 B2
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`list can be displayed when the folder or icon representing the
`group is selected. If an icon is used, the Buddies would be
`grouped in and shown on the phone display. Groups receive a
`color on the GUI . . . .
`Id. at 11:31–39 (emphases added). That Haney’s system allows the user to
`enable or disable, or turn on or off, tracking of “entire groups” of people
`inevitably means the user has the option to choose among multiple groups.
`Thus, at this stage, we find sufficient support in Haney for the capability of a
`person in one group to select and track people in other groups. We are not
`persuaded at this time by PerDiem’s argument to the contrary. As such, the
`current record demonstrates a reasonable likelihood that at least claim 1
`would have been obvious over Haney as understood by an ordinarily skilled
`artisan.
`Having decided that Telular is likely to prevail on “at least 1 of the
`claims challenged in the petition,” 35 U.S.C. 314(a), we exercise our
`discretion under 37 C.F.R. § 42.108 to have the review proceed on all claims
`and grounds where Haney serves as a basis for unpatentability. In doing so,
`we seek to achieve finality of review at the Board and avoid parallel or serial
`review in the district court, at least with respect to prior art already at issue
`in this proceeding. See Intex Recreation Corp. v. Bestway Inflatables &
`Material Corp., IPR2016-00180, Paper 13, at 8–11 (PTAB Jun. 6, 2016);
`see also Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1316
`(Fed. Cir. 2016) (stating that “[t]he validity of claims for which the Board
`did not institute inter partes review can still be litigated in district court”).
`Here, Telular’s second and third grounds collectively challenge claims
`1–20, relying on Haney alone as the basis of unpatentability. Telular’s
`fourth ground simply builds on the second and third grounds by adding Fast
`
`10
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`IPR2017-01007
`Patent 9,119,033 B2
`
`to Haney in challenging the same set of claims. See Pet. 48–62. Also, with
`respect to Telular’s second ground, which asserts anticipation by Haney, we
`are “cognizant of the ramifications of partial institution where the grounds
`are in different statutory classes.” Amendments to the Rules of Practice for
`Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg. 50720, 50739
`(Aug. 20, 2015) (Response to Comment 12). Thus, concerns of fairness and
`efficiency persuade us to institute not only on the obviousness grounds
`relying Haney, but also on the anticipation ground relying on Haney,
`especially where, as here, these grounds overlap in terms of the claims being
`challenged and the key reference being asserted.6 See HP Inc. v. MPHJ
`Tech. Inv., LLC, 817 F.3d 1339, 1347 (Fed. Cir. 2016) (holding that
`petitioner was “not estopped from raising the obviousness of claim 13 in a
`subsequent court or Board proceeding” where Board instituted only on
`grounds of anticipation of claim 13). In sum, we exercise our discretion to
`institute inter partes review on all grounds that rely on Haney, namely,
`grounds 2, 3, and 4 as specified in the Petition. Pet. 7.
`C. Ground 1—Asserting Anticipation by Phillips
`Telular also asserts that claims 1–20 are unpatentable as anticipated
`by Phillips. Pet. 11–25. For this ground, we again exercise our discretion
`under 37 C.F.R. § 42.108. Notably, Phillips forms the basis of numerous
`grounds in related proceedings on which we have already instituted inter
`partes review. See, e.g., IPR2016-01278, IPR2017-00968, IPR2017-00969,
`and IPR2017-00973. Given our familiarity with Phillips and its impact on
`the claims at issue in those earlier proceedings, we see no reason not to
`
`
`6 Telular relies on “the preceding discussion of Haney” in the obviousnees
`ground that also relies on Fast. Pet. 51–52.
`
`11
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`render a final written decision on the impact of Phillips in this proceeding as
`well, especially where, as here, the patents being challenged across these
`related proceedings share a similar specification and some of the same
`claims terms. Thus, for purposes of consistency and efficiency, we exercise
`our discretion to institute on the Phillips ground here. In doing so, we hope
`to save the parties from possibly having to deal with this line of attack in the
`related Texas action, thereby preserving judicial resources.7 See Synopsys,
`814 F.3d at 1316 (“The validity of claims for which the Board did not
`institute inter partes review can still be litigated in district court.”).
`IV. CONCLUSION
`After considering the evidence and arguments of record, we conclude
`that Telular has demonstrated a reasonable likelihood of succeeding in
`challenging the patentability of at least independent claim 1 of the ’033
`patent. And, in keeping with our mission of “the just, speedy, and
`inexpensive resolution” of patentability disputes, we exercise our discretion
`to institute inter partes review of all claims and grounds specified in the
`Petition. 37 C.F.R. §§ 42.1(b), 42.108.
`V. ORDER
`Accordingly, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–20 of the ’033 patent is instituted; and
`
`
`7 On June 6, 2017, the district court denied Telular’s motion to stay the
`related Texas action “WITHOUT PREJUDICE to reurge after the PTAB
`decides whether to institute inter partes review of the asserted claims.”
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`12
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`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4(b), inter partes review of the ’033 patent shall commence on
`the entry date of this Order, and notice is hereby given of the institution of a
`trial.
`
`
`FOR PETITIONER:
`Vivek Ganti
`Steven G. Hill
`Sharad Bijanki
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkwlaw.com
`perdiemIPR@hkw-law.com
`sb@hkw-law.com
`
`FOR PATENT OWNER:
`Alan Whitehurst
`Marissa R. Ducca
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`PERDIEM-IPR@quinnemanuel.com
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
`
`
`
`
`13
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`
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