IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DEPARTMENT OF JUSTICE,
`Petitioner,
`
`
`
`v.
`
`
`
`ENVISIONIT, LLC,
`Patent Owner,
`
`
`
`
`CASE NO. TO BE ASSIGNED
`PATENT NO. 8,438,221
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,438,221
`UNDER 35 U.S.C. §§ 311–319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
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`TABLE OF CONTENTS
`LIST OF EXHIBITS ................................................................................................ III 
`I. 
`INTRODUCTION ................................................................................................. 1 
`II. 
`MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1)) ................................................ 1 
`A.  Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) ...................................... 1 
`B.  Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................... 4 
`C.  Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) .............................. 5 
`D.  Service Information (37 C.F.R. § 42.8(b)(4)) ........................................ 6 
`FEES (37 C.F.R. § 42.103) ............................................................................... 6 
`III. 
`IV.  REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §
`42.104 .............................................................................................................. 6 
`A.  Grounds for Standing (37 C.F.R. § 42.104(a)) ....................................... 6 
`B.  Citation of Prior Art ................................................................................ 7 
`C.  Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1)–(2)) ........... 7 
`D.  Person of Ordinary Skill in the Art ......................................................... 8 
`E.  Claim Construction (37 C.F.R. § 42.104(b)(3)) ..................................... 8 
`1. 
`“broadcast” ................................................................................... 8 
`F.  Unpatentability of the Construed Claims (37 C.F.R. § 42.104(b)(4)) ... 9 
`G.  Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ................................. 10 
`SUMMARY OF THE ’221 PATENT ...................................................................... 10 
`A.  Overview of the ’221 Patent ................................................................. 10 
`1. 
`The claim at issue: Claim 19 ...................................................... 10 
`2. 
`The alleged invention of the ’221 Patent ................................... 11 
`Prosecution History Summary of the ’221 Patent ................................ 11 
`B. 
`VI.  THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER WILL
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE ’221
`PATENT ........................................................................................................ 13 
`A.  The state of the art on February 12, 2004: broadcasting messages
`to a geographic region was widely known and well as access
`control systems for assigning user roles and privileges ............. 14 
`
`V. 
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`B.  Ground I: Claim 19 of the ’221 Patent is obvious over Gundlegård
`Thesis (Ex. 1013) in view of the 3GPP Standard (Ex. 1019), Sandhu
`(Ex. 1020), and Rieger (Ex. 1017) in view of Zimmers (Ex. 1018). ... 15 
`1.  Motivation to Combine Gundlegård with the 3GPP Standard ... 29 
`2.  Motivation to Combine Gundlegård with Sandhu ..................... 29 
`3.  Motivation to Combine Gundlegård with Rieger in View of
`Zimmers ...................................................................................... 30 
`C.  Ground II: Claim 19 of the ’221 Patent is rendered obvious over Mani
`(Ex. 1014) in view of the 3GPP Standard (Ex. 1019), Sandhu (Ex.
`1020), and Rieger (Ex. 1017) in view of Zimmers (Ex. 1018). ........... 33 
`1.  Motivation to Combine Mani with the 3GPP Standard ............. 42 
`2.  Motivation to Combine Mani with Sandhu ................................ 43 
`3.  Motivation to Combine Mani with Rieger in View of Zimmers
` .................................................................................................... 44 
`VII.  CONCLUSION ................................................................................................... 46 
`
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`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 1001
`
`U.S. Patent No. 8,438,221
`
`Ex. 1002
`
`U.S. Patent No. 7,693,938
`
`Ex. 1003
`
`U.S. Patent No. 8,103,719
`
`Ex. 1004
`
`U.S. Patent No. 8,438,212
`
`Ex. 1005
`
`U.S. Patent No. 9,136,954
`
`Ex. 1006
`
`File History (excerpts) for U.S. Patent No. 7,693,938
`
`Ex. 1007
`
`File History (excerpts) for U.S. Patent No. 8,103,719
`
`Ex. 1008
`
`File History (excerpts) for U.S. Patent No. 8,438,212
`
`Ex. 1009
`
`File History (excerpts) for U.S. Patent No. 8,438,221
`
`Ex. 1010
`
`File History (excerpts) for U.S. Patent No. 9,136,954
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Declaration of Randall Snyder
`
`CV of Randall Snyder
`
`Gundlegård Thesis
`
`U.S. Patent Application Publ. No. 2002/0184346 A1 to Mani
`
`Ex. 1015
`
`U.S. Patent Application Publ. No. 2002/0188725 A1 to Mani
`
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`Exhibit
`
`Ex. 1016
`
`Ex. 1017
`
`Description
`
`REPORT AND ORDER AND FURTHER NOTICE OF
`PROPOSED RULE MAKING (FCC Report No. 94-288) (“FCC
`Report”)
`U.S. Patent Application Publ. No. 2002/0103892 A1 to Rieger
`
`Ex. 1018
`
`U.S. Patent No. 6,816,878 to Zimmers
`
`Ex. 1019
`
`3GPP Standard (4.2.0)
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`
`R. Sandhu et al., “Access Control: Principles and Practice,” IEEE
`Communications Magazine September 1994, Vol. 32 No. 9, pp.
`40-48.
`Declaration of Amelia Nuss
`
`Intelligent
`
`from Christensen et al., “Wireless
`Excerpts
`Networking” Artech House, Inc., 2001
`E112 - Wireless Emergency Services Whitepaper, CMG
`Wireless Data Solutions, November 2001
`Report of the Ministry of Interior, Finland “Information to the
`Public – Warning and Alarm System” 2000
`Wood, M. “Disaster Communications” APCO Institute, Inc.,
`June 1996
`Excerpts from UNIX System V, RELEASE 4, User’s Guide,
`UNIX System Laboratories, Inc., Prentice-Hall, Inc. 1990
`U.S. Patent No. 6,112,075 Weiser
`
`Ex. 1028
`
`3GPP Specification Change Request List
`
`
`
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`I.
`
`
`
`INTRODUCTION
`
`U.S. Patent No. 8,438,221 (“the ’221 Patent”) is generally directed toward
`
`“message broadcast systems and
`
`in particular
`
`location-specific message
`
`broadcasting aggregator and gateways.” Ex. 1001, ’212 Patent, at 1:19-22. The
`
`prior art teaches each and every element (either alone or in combination) recited in
`
`claim 19 of the ’221 Patent and, therefore, Petitioner respectfully requests that the
`
`Board institute trial proceedings and find the challenged claim invalid under 35
`
`U.S.C. § 103.
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))
`A.
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party in interest for this petition for Inter Partes Review (“IPR”) is
`
`The United States as represented by the Department of Justice and the Department
`
`of Homeland Security. International Business Machines Corporation (IBM) was
`
`notified in the co-pending Court of Federal Claims action pursuant to Court of
`
`Federal Claims Rule 14, giving IBM an opportunity to appear, if it so desired, as a
`
`party and to assert whatever interest it may have in that action due to a patent
`
`indemnity clause in a procurement contract. See Cellcast Techs. et al. v. United
`
`States, No. 15–cv–1307, ECF No. 12 (Fed. Cl. March 8, 2016). IBM has since
`
`joined the action. However, IBM is not a real party-in-interest here.
`
`
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`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
`
`2012) explains that “[w]hether a party who is not a named participant in a given
`
`proceeding nonetheless constitutes a ‘real party-in-interest’. . . to that proceeding is
`
`a highly fact-dependent question.” Id. at 48,759. The determination of whether a
`
`non-party is a real party-in-interest involves a consideration of control; “[a] common
`
`consideration is whether the non-party exercised or could have exercised control
`
`over a party’s participation in a proceeding.” Id. Other considerations may include
`
`whether a non-party, in conjunction with control, is funding the proceeding and
`
`directing the proceeding. Id. at 48,759–60.
`
`IBM is not a real party-in-interest here because “[t]he mere existence of an
`
`indemnification agreement does not establish that the indemnitor has the opportunity
`
`to control an inter partes review.” Mercedes-Benz USA, LLC v. Proximity
`
`Monitoring Innovations LLC, Case No. IPR2015-00397, slip. op. at 9 (PTAB July
`
`17, 2015) (Paper 18) (determining that the existence of an indemnification
`
`agreement was not sufficient to establish that the unnamed parties were real parties-
`
`in-interest); see also Broadcom Corp. v. Telefonaktiebolaget I.M. Ericsson,
`
`IPR2013-00601, slip. op. at 7-11 (PTAB Jan. 24, 2014) (Paper 23) (“Paying for trial
`
`expenses pursuant to indemnity normally does not establish privity or control.”);
`
`Wavemarket Inc, v. Locationet Sys. Ltd., IPR2014-00199, slip. op. at 5 (PTAB Aug.
`
`11, 2014) (Paper 34); Apple Inc. v. Achates Reference Publ. Inc., IPR2013-00080,
`
`
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`slip. op. at 4-7 (PTAB April 3, 2013) (Paper 18). A petitioner and a non-party's
`
`status as codefendants and co-members of a joint defense group is not alone
`
`sufficient to render the non-party a real party in interest. Trial Practice Guide, 77
`
`Fed. Reg. at 48,760; see, e.g., Petroleum Geo-Servs. Inc. v. WesternGeco LLC, Case
`
`IPR2014-00687, slip op. at 16 (PTAB Dec. 15, 2014) (Paper 33) (holding petitioner
`
`and non-party's shared interest in invalidating patent at issue, “collaborat[ion]
`
`together, and invo[cation of the] common interest privilege with respect to sharing
`
`potentially invalidating prior art references” was insufficient to render non-party a
`
`real party in interest).
`
`Beyond an arm's length exchange of prior art, IBM and the government have
`
`not collaborated in any way on the preparation of this petition. Nor has IBM funded
`
`this petition. The filing fees for this petition have been paid from the deposit account
`
`of the Department of Homeland Security, which is funded from agency
`
`appropriations (which, in turn, of course, originated from taxpayers). No draft or
`
`final version of this petition has been exchanged with IBM at any stage. Simply put,
`
`the government has no control over IBM, and IBM has exercised no control over the
`
`government in any part of the civil action or this proceeding. Cf. BAE Sys. Info. v.
`
`Cheetah Omni, LLC, IPR2013-00175, Slip. Op. at 5-6 (Paper 15) (PTAB July 3,
`
`2013) (holding that the contractual relationship between the government and its
`
`contractor did not constitute a “privy” relationship that would preclude the
`
`
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`contractor from challenging a patent in an Inter Partes Review Proceeding in which
`
`the government did not participate).
`
`B.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`
`
`The ’221 Patent is currently the subject of litigation against the United States
`
`of America in the Court of Federal Claims, captioned Cellcast Techs. et al. v. United
`
`States (filed November 2, 2015).
`
`Four other patents have been asserted in the same litigation: U.S. Patent Nos.
`
`7,693,938 (“the ‘938 Patent”), 8,103,719 (“the ‘719 Patent”), 8,438,212 (“the ’212
`
`Patent”), and 9,136,954 (“the ‘954 Patent”). Concurrently with this petition, the
`
`United States has also filed IPR petitions against the ‘938, ’719, ’212, and ‘954
`
`Patents.
`
`
`
`
`
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`C.
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel
`
`First Back-up Counsel
`
`David M. Ruddy (Reg. No. 53,945)
`david.ruddy@usdoj.gov
`Postal Delivery Address
`Civil Division, Department of Justice
`1100 L Street NW, RM 11130
`Washington, DC 20530 (use zipcode
`20005 for overnight service)
`T: (202) 353-0517; F:(202) 307-0345
`Back-up Counsel
`
`Nathan Cristler (Reg. No. 61736)
`Nathan.Cristler@fema.dhs.gov
`Postal Delivery Address
`Federal Emergency Management
`Agency, Office of Chief Counsel
`500 C Street SW, 8NE
`Washington, DC 20472
`T: (202) 212-1130
`
`Nathan Grebasch (Reg. No. 48600)
`Nathan.Grebasch@hq.dhs.gov
`Postal Delivery Address
`245 Murray Lane, Mail Stop 0205
`Washington, DC 20528
`T: (202) 254-6067
`
`Back-up Counsel
`
`Trenton Roche (Reg. No. 61164)
`Trenton.Roche@hq.dhs.gov
`Postal Delivery Address
`245 Murray Lane, Mail Stop 0205
`Washington, DC 20528
`T: (202) 254-6067
`
`
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`Back-up Counsel
`
`Back-up Counsel
`
`Lavanya Ratnam (Reg. No. 38277)
`Lavanya.Ratnam@hq.dhs.gov
`Postal Delivery Address
`245 Murray Lane, Mail Stop 0205
`Washington, DC 20528
`T: (202) 254-6161
`
`
`John Fargo (Reg. No. 29,533)
`john.fargo@usdoj.gov
`Postal Delivery Address
`Civil Division, Department of Justice
`1100 L Street NW, RM 11116
`Washington, DC 20530
`T: (202) 514-7223; F:(202) 307-0345
`
`D.
`Service Information (37 C.F.R. § 42.8(b)(4))
`Service information is provided in the designation of lead and back-up counsel
`
`
`
`above.
`
`
`
`III. FEES (37 C.F.R. § 42.103)
`
`
`
`The undersigned authorizes the Office to charge all necessary fees to Deposit
`
`Account No. 504378 for the fees set forth in 37 C.F.R. § 42.15(a) for this Petition as
`
`well as any additional fees that might be due.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘221 Patent is
`
`available for inter partes review and Petitioner is not barred or estopped from
`
`
`
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`requesting an inter partes review challenging the ’221 Patent on the grounds
`
`identified in the present petition.
`
`B.
`
`Citation of Prior Art
`
`Exhibit
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1017
`
`Ex. 1018
`
`Description
`D. Gunglegard,
`“Automative Telematics
`Services based on Cell
`Broadcast”
`U.S. Patent Application
`Publ. No. 2002/0184346 A1
`to Mani
`U.S. Patent Application
`Publ. No. 2002/0188725 A1
`to Mani
`U.S. Patent Application
`Publ. No. 2002/0103892 A1
`to Rieger
`U.S. Patent No. 6,816,878
`to Zimmers
`
`Publication or
`Filing Date
`Published at least
`as early as
`October 27, 2003
`(see Ex. 1021)
`Filed May 31,
`2001; Published
`Dec. 5, 2002
`Filed May 31,
`2001; Published
`Dec. 12, 2002
`Filed Dec. 26,
`2001; Published
`Aug. 1, 2002
`Filed Feb. 11,
`2000;
`
`Availability as
`Prior Art
`35 U.S.C.
`§ 102(a)
`
`35 U.S.C. §
`102(a), (b), (e)
`
`35 U.S.C.
`§ 102(a), (b),
`(e)
`35 U.S.C.
`§ 102(a), (b),
`(e)
`35 U.S.C.
`§ 102(a), (e)
`
`C.
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1)–(2))
`
`
`
`The relief requested by Petitioner is that Claim 19 of the ’221 Patent be found
`
`
`
`
`
`unpatentable and cancelled on the following grounds:
`
`Ground
`
`Claims
`
`Basis
`
`I
`
`19
`
`Unpatentable under 35 U.S.C. § 103 over Gundlegård
`Thesis (Ex. 1013) in view of the 3GPP Standard (Ex.
`1019), Sandhu (Ex. 1020), and Rieger (Ex. 1017) in view
`of Zimmers (Ex. 1018).
`
`
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`Ground
`
`Claims
`
`Basis
`
`II
`
`19
`
`Unpatentable under 35 U.S.C. § 103 over Mani (Ex.
`1014) in view of the 3GPP Standard (Ex. 1019), Sandhu
`(Ex. 1020), and Rieger (Ex. 1017) in view of Zimmers
`(Ex. 1018).
`
`D.
`
`Person of Ordinary Skill in the Art
`
`
`
`As explained by Randall Snyder:
`
`a person of ordinary skill in the art relevant to the subject matter of the
`‘954 Patent (Ex. 1001) at the time of the invention would have a
`computer science, engineering, physics, mathematics or other technical
`degree at the undergraduate level. In addition, I would expect this
`individual to have at least three to five years of practical cellular
`network and protocol design and software development experience,
`along with an understanding of cellular network architecture,
`standardized protocol specifications and text messaging technologies,
`all of which was very-well understood by
`the early 1990s|
`
`Ex. 1011, at ¶ 28.
`
`E.
`
`Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`
`
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. §42.100(b).
`
`1. “broadcast”
`Petitioner sets forth and adopts the following construction for the term
`
`“broadcast,” used in Claim 19 of the ’221 Patent: “to transmit data for purposes of
`
`wide dissemination over a communications network including, but not limited to,
`
`cellular carriers, digital private radio systems, private radio systems, internet,
`
`wireline telecommunications, satellite, and CATV systems.”
`8
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`This construction comes directly from the specification, which states “[i]n
`
`most cases, the message is transmitted to every known operator offering coverage of
`
`the area and may include mobile carriers, digital private radio systems operators,
`
`private
`
`radio
`
`system operators,
`
`internet
`
`service providers, wireline
`
`telecommunication service providers, satellite service providers, CATV operators,
`
`etc..” Ex. 1001, 12:49-54. The breath of transmission means are highlighted in other
`
`passages. For example, claims 3 and 5 list a plethora of public and private networks
`
`contemplated by the ’221 patent. Ex. 1001, at 26:23-29, 42-48. Indeed, nothing in
`
`the specification appears to require electronic communication thereby suggesting the
`
`systems and methods could be implemented by hand. Accordingly, a person of
`
`ordinary skill in the art would understand the term “broadcast” as used in the claims
`
`of the ’221 patent and in light of the specification to mean “to transmit data for
`
`purposes of wide dissemination over a communications network including, but not
`
`limited to, cellular carriers, digital private radio systems, private radio systems,
`
`internet, wireline telecommunications, satellite, and CATV systems.” See also Ex.
`
`1011 (Snyder Report), at ¶ 78.
`
`F. Unpatentability of the Construed Claims (37 C.F.R. § 42.104(b)(4))
`
`
`
`An explanation of why Claim 19 of the ’221 Patent is unpatentable under the
`
`statutory grounds identified above is provided in Section VI, below.
`
`
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`G. Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`
`
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are provided
`
`below in the form of explanatory text and claim charts. An Exhibit List with the
`
`exhibit numbers and a brief description of each exhibit is set forth above.
`
`V. SUMMARY OF THE ’221 PATENT
`A. Overview of the ’221 Patent
`
`
`
`The ’221 Patent (Ex. 1001), entitled “Message Broadcasting Admission
`
`Control System and Method,” issued on April 6, 2010, from U.S. Patent Application
`
`No. 11/602,461 (“the ’461 Application”). The ’221 Patent claims priority under 35
`
`U.S.C. § 119(e) to provisional application No. 60/544,739, filed February 13, 2004
`
`(“the ’739 provisional application”).
`
`
`
`
`
`1. The claim at issue: Claim 19
`
`The claim at issue in this Petition, Claim 19, is directed to a method for
`
`delivering broadcast messages. Claims 19 is an independent method claim. The text
`
`of the claim is reproduced in the charts below.
`
`
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`2. The alleged invention of the ’221 Patent
`
`
`
`The ’221 patent describes itself as generally directed to “message broadcast
`
`systems and in particular location-specific message broadcasting aggregator and
`
`gateways.” Ex. 1001, at 1:20-23. The claims are drafted with substantial excess
`
`verbiage. Although wordy, none of the claims at issue in this petition specifically
`
`recite any particular hardware or software component in delineating the boundaries
`
`of the claims. Indeed, the specification repeatedly makes clear that the systems and
`
`methods can be implemented on any generic computer. See, e.g., Ex. 1001, at 17:5-
`
`6 (“It may be implemented in hardware or software . . . This may be implemented in
`
`any possible arrangement including a table, chart, or map.”); id. at 18:34-37 (“The
`
`Broadcast Agent interacts with the PLBS-SB over a web page, (via a Web Portal);
`
`loading of special client software is an [sic] unnecessary. Almost any computer can
`
`use PLBS-SB without any modification at all.”); id. at 18:52-53 (“may be utilized
`
`using any existing or future hardware and/or software platform”). As reflected
`
`below, the claims at issue are broadly, albeit awkwardly, drafted without regard to
`
`any specific hardware such that they represent nothing more than a routine and
`
`predictable combination of well-known elements.
`
`B.
`
`Prosecution History Summary of the ’221 Patent
`
`The ‘221 Patent was issued from U.S. Patent Application No. 13/311,448
`
`which was filed on December 5, 2011.
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`On April 24, 2012, the examiner rejected all pending claims on double
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`patenting and obviousness grounds. Ex. 1009, pp. 140-160. The examiner’s double
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`patenting rejections were based on either U.S. Patent No. 8,073,903 (“the ‘903
`
`Patent”), or U.S. Patent No. 7,752,259 (“the ‘259 Patent). Ex. 1009, pp. 142-145.
`
`The remaining claims were rejected on double patenting grounds based on the ‘903
`
`Patent or the ‘259 Patent in view of the following additional references: Atkin (U.S.
`
`Publication No. 2004/0192258) and Vella (U.S. Publication No. 2004/0103158 to
`
`Vella). Ex. 1009, pp. 144-146.
`
`In the same office action, the examiner also rejected all pending claims on
`
`separate obviousness grounds. The examiner stated that pending claims 1-8, 12, 15-
`
`17, and 19 were obvious over Vella in view of Allport (U.S. Patent No. 6,480,578).
`
`Ex. 1009, pp. 146-153. The examiner rejected pending claims 9-11 as obvious over
`
`Vella, in view of Allport and Kolsrud (U.S. Publication No. 2004/0203562). Ex.
`
`1009, pp. 153-155. The examiner rejected pending claims 13-14 as obvious over
`
`Vella, in view of Allport and Atkin. Ex. 1009, pp. 155-157. The examiner rejected
`
`pending claims 18 and 20 as obvious over Vella, in view of Allport and Zimmers
`
`(U.S. Publication No. 2005/0013417). Ex.1009, pp. 157-159.
`
`
`
`On October 24, 2012, the applicant responded to the office action. First, the
`
`applicant submitted terminal disclaimers over the ‘903 Patent and the ‘259 Patent.
`
`Ex. 1009, p. 214 (‘259 Patent disclaimer), p. 219 (‘903 Patent disclaimer). Second,
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`the applicant amended the claims; in particular, the applicant amended claims 1 and
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`19 to include the term “geographically defined” in the claims. Ex. 1009, pp. 209,
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`213. Third, the applicant responded to the examiner’s obviousness rejections by
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`distinguishing the claims from the cited prior art.
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`
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`On December 11, 2012, the PTO issued a notice of allowance. Ex. 1009, pp.
`
`230-236.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’221 PATENT
`
`
`
`According to the pre-AIA version of 35 U.S.C. § 103(a), “[a] patent may not
`
`be obtained . . . if the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been obvious
`
`to a [POSITA] to which said subject matter pertains.” In this case, the subject matter
`
`of Claim 19 of the ’221 Patent is disclosed, taught, and rendered obvious by the prior
`
`art as explained below. As set forth below, the references in Ground I together
`
`render obvious claim 19 pursuant to 35 U.S.C. § 103, and the references in Ground
`
`II together render obvious claim 19 pursuant to 35 U.S.C. § 103. These Grounds
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`thus provide a reasonable likelihood that the Petitioner will prevail on at least one
`
`claim. See 35 U.S.C. § 314(a).
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`A. The state of the art on February 12, 2004: broadcasting messages
`to a geographic region was widely known and well as access control
`systems for assigning user roles and privileges
`
`
`
`The declaration of Randall Snyder (Ex. 1011) goes into great detail explaining
`
`the state of the art on and before February 12, 2004. As set forth in the declaration,
`
`it was well known on and before February 12, 2004, to implement a cell broadcast
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`messaging application. As one example, Mr. Snyder points to a telecommunications
`
`standard in existence more than one-year before February 12, 2004 and writes that
`
`“[t]he 3GPP Standard details the underlying technology required to implement a cell
`
`broadcast messaging application. This standard describes and depicts several
`
`example applications of the technology including news, sports, weather, finance,
`
`etc.” Ex. 1011, at ¶ 53 (relying on Ex. 1019). In addition, Mr. Snyder points to a
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`report from the government of Finland “describing and depicting how cell broadcast
`
`messaging technology could be used for a public warning and alarm system.” Id. at
`
`¶ 54 (relying on Ex. 1024).
`
`Mr. Snyder then explains that the state of telecommunications applications on
`
`and before February 12, 2004, were “implemented with comprehensive functions to
`
`record and log the details of transmissions sent from or received by the application.”
`
`Ex. 1011, at ¶ 61-63 (relying on Ex. 1013). The use of cell broadcast applications
`
`to transmit messages to defined target areas was also well-known, including
`
`implementing the application using standard database as a lookup table to associate
`
`
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`cellular coverage with other established geographic boundaries. See id. at ¶ 67
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`(describing examples of lookup tables).
`
`Mr. Snyder then explains that principles of system access control, user roles,
`
`and permissions were also very well-known. See id. at ¶ 69 (“determining what
`
`users are authorized to do based on who they are, was a well-known security
`
`technique at least as far back as 1990.”). Mr. Snyder points to a UNIX user manual
`
`and an IEEE article, both published nearly a decade or more before the pertinent
`
`prior art date. See Ex. 1011, at ¶ 69-70 (relying on Ex. 1020 and 1026).
`
`B. Ground I: Claim 19 of the ’221 Patent is obvious over Gundlegård
`Thesis (Ex. 1013) in view of the 3GPP Standard (Ex. 1019), Sandhu
`(Ex. 1020), and Rieger (Ex. 1017) in view of Zimmers (Ex. 1018).
`
`Gundlegård (Ex. 1013) is a master’s program thesis from the Linköping
`
`University in Sweden. As documented by the declaration of Amelia Nuss (Ex.
`
`1021), the thesis was published at least as early as October 27, 2003. Ex. 1021.
`
`Gundlegård discloses a cell broadcast system for a number of applications intended
`
`for delivering targeted messages to a specific geographic area, including for local
`
`warnings (Ex. 1013 at Section 6.5) and weather forecasts and warnings (Ex. 1013 at
`
`Section 6.6).
`
`The Office Patent Trial Practice Guide, explains that “[w]here appropriate,
`
`claim charts can streamline the process of identifying key features of a claim and
`
`comparing those features with specific evidence.” 77 Fed. Reg. 48,756, 48,764
`
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`(Aug. 14, 2012). Petitioner submits that Gundlegård in view of 3GPP Standard,
`
`Sandhu, and Rieger in view of Zimmers teaches each of the features of the subject
`
`claims as set forth in the charts below, which are included in the expert report of
`
`Randall Snyder. Ex.1011.
`
`Claim 19
`
`19[pre]. A method of
`public service
`broadcast messaging to
`a broadcast target area,
`the method comprising:
`
`
`
`Gundlegård in View of the 3GPP Standard, Sandhu
`and Rieger in View of Zimmers
`Gundlegård discloses a method of public service
`broadcast messaging to a broadcast target area.
`Ex. 1013, at 3 ¶ 6 (“Cell Broadcast is a technique within
`GSM and UMTS to broadcast text messages to one or
`more cells in the network.”).
`Ex. 1013, at 5 ¶ 6 (“In order to analyse the effects of an
`incident warning system based on Cell Broadcast a
`study of relevant tests and literature within incident
`warning systems and in-car behaviour has been made.”)
`(emphasis added).
`Ex. 1013, at 6 ¶ 6 (“Chapter six contains a short
`description of the services outside automotive telematics
`that can be offered with Cell Broadcast.”).
`Ex. 1013, at 34 ¶ 7 (“Cell Broadcast is also well suited
`for local warnings outside the scope of road traffic.”
`Ex. 1013, at 34 ¶ 7.). (emphasis added).
`The 3GPP Standard, Rieger and Zimmers also disclose a
`method of public service broadcast messaging to a
`broadcast target area. Ex. 1019, at Section 2 (“The CBS
`service is analogous to the Teletex service offered on
`television, in that like Teletex, it permits a number of
`unacknowledged general CBS messages to be broadcast
`to all receivers within a particular region. CBS messages
`are broadcast to defined geographical areas known as
`cell broadcast areas. These areas may comprise of one
`or more cells, or may comprise the entire PLMN.
`Individual CBS messages will be assigned their own
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`Claim 19
`
`19[a]. receiving over
`an input interface a
`broadcast request
`including a broadcast
`agent identification, a
`geographically defined
`broadcast target area,
`and a broadcast
`message from one of a
`plurality of coupled
`
`
`
`Gundlegård in View of the 3GPP Standard, Sandhu
`and Rieger in View of Zimmers
`geographical coverage areas by mutual agreement
`between the information provider and the PLMN
`operator. CBS messages may originate from a number
`of Cell Broadcast Entities (CBEs), which are connected
`to the Cell Broadcast Centre. CBS messages are then sent
`from the CBC to the cells, in accordance with the CBS's
`coverage requirements.”) (emphases added).
`Ex. 1017, Abstract (“A communications system to post
`arbitrary information to any geographical region simply
`by outlining the region on a map in the system’s user
`interface and attaching the information to the outlined
`region is provided.”).
`Ex. 1018, at 1:5-7 (“The present invention relates to the
`delivery of emergency information to persons needing to
`be notified of such information.”).
`Ex. 1018, at 4:5-15 (“It is … important that the alert
`notification system have the ability to pinpoint, calculate
`and define dynamically all recipients with respect to their
`notification requirements then systematically notify those
`individuals (and only those individuals) within those
`defined geographic locations. The system must provide
`the notification quickly and accurately, with the ability to
`track the progress of the notification process and provide
`scenario resolution status until the notification scenario is
`completed or until the alert has expired.”)
`
`Gundlegård discloses receiving over an input interface a
`broadcast request from one of a plurality of coupled
`broadcast agent message origination systems.
`Ex. 1013, at 7 ¶ 3 (“The content provider has an
`interface to the Cell Broadcast Entity (CBE) that
`varies depending on application.”) (emphasis added).
`Ex. 1013, at 7:
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`Gundlegård in View of the 3GPP Standard, Sandhu
`and Rieger in View of Zimmers
`
`Claim 19
`
`broadcast agent
`message origination
`systems;
`
`Ex. 1013, at 28 ¶ 1 (“A developed automotive telematics
`system based on Cell Broadcast can have an information
`flo