throbber
IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`Civil Action No. 2:16-cv-00980-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`
`INTELLECTUAL VENTURES II LLC,
`
`
`
`
`
`Plaintiff,
`
`v.
`
`FEDEX CORP., FEDERAL EXPRESS
`CORP., FEDEX GROUND PACKAGE
`SYSTEM, INC., FEDEX FREIGHT,
`INC., FEDEX CUSTOM CRITICAL
`INC., FEDEX OFFICE AND PRINT
`SERVICES, INC., and GENCO
`DISTRIBUTION SYSTEM, INC.,
`
`
`
`
`
`Defendants.
`
`PLAINTIFF INTELLECTUAL VENTURES II LLC’S FIRST SUPPLEMENTAL
`OBJECTIONS AND RESPONSES TO DEFENDANTS’ SECOND SET OF
`INTERROGATORIES (NOS. 14-15)
`
`Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, Plaintiff Intellectual
`
`Ventures II LLC (“Intellectual Ventures”) hereby makes the following first supplemental
`
`objections and responses to Defendants’ Second Set of Interrogatories (Nos. 14-15). Intellectual
`
`Ventures reserves the right to further supplement or amend these objections and responses to the
`
`extent allowed by the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
`
`Court’s Docket Control Order (D.I. 54) and Discovery Order (D.I. 55) in this case.
`
`GENERAL OBJECTIONS
`
`Intellectual Ventures incorporates by reference its general objections to Defendants’ First
`
`Set of Interrogatories (Nos. 1-13) served on April 19, 2017, which apply to each interrogatory
`
`
`
`1
`
`Exhibit 2121 Page 1
`
`IV Exhibit 2121
`FedEx v. IV
`Case IPR2017-02028
`
`

`

`regardless of whether the general objections are specifically incorporated into the specific
`
`objections and responses below.
`
`SPECIFIC OBJECTIONS AND RESPONSES
`
`Interrogatory No. 14:
`
`If you contend that any patent of the Patent(s)-in-Suit is not invalid for the reasons set
`forth in Defendants’ Invalidity Contentions, describe all factual and legal bases supporting your
`contention(s) on a claim-by-claim basis, including, but not limited to, identifying each claim
`element you contend is absent from any prior art reference asserted by Defendants, the reason
`you contend such element is absent, and an identification of any documents, things, and/or
`witnesses that you intend to rely upon to support such contention(s).
`
`Response to Interrogatory No. 14:
`
`Intellectual Ventures objects to this interrogatory to the extent it calls for information
`
`protected from discovery by the attorney-client privilege and/or the work product doctrine.
`
`Intellectual Ventures further objects to this request as overly broad and improperly calling for the
`
`disclosure of attorney work product to the extent that it seeks information concerning Intellectual
`
`Ventures’ pre-suit investigations concerning the Patents-in-Suit. See, e.g., Fed. R. Civ. P.
`
`26(b)(3)(A). Intellectual Ventures further objects to this request to the extent it calls for
`
`information not in its possession, custody, or control and specifically information that is already
`
`in Defendants’ possession, custody, or control, or otherwise equally available to Defendants.
`
`Intellectual Ventures further objects to this interrogatory as compound, because it seeks a
`
`response to “each claim element” that is absent from “any prior art reference asserted by
`
`Defendants” as well as the “reason you contend such element is absent,” (which includes 90
`
`charts and thousands of combinations of references), and therefore contains multiple discrete
`
`subparts, each of which counts towards Defendants’ total number of interrogatories.
`
`Intellectual Ventures further objects to this interrogatory as overbroad and unduly
`
`burdensome. Here, this interrogatory is particularly overbroad and unduly burdensome as it calls
`
`
`
`2
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`Exhibit 2121 Page 2
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`

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`for Plaintiff to respond to ninety (90) invalidity charts relating to over eighty (80) references and
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`systems allegedly comprising thousands of obviousness combinations across the five Patents-in-
`
`Suit, particularly when Defendants are unlikely to be able to proceed to trial with all of those
`
`references and combinations. See Mirror Worlds Techs., LLC v. Apple Inc., Case No. 6:13-cv-
`
`419, 2014 U.S. Dist. LEXIS 196155, at *8-9 (E.D. Tex. Dec. 3, 2014) (“Requiring [plaintiff] to
`
`respond to all of [defendant’s] charted prior art references would place a larger burden on
`
`[plaintiff] than [defendant] faced in responding to [plaintiff’s] non-infringement contentions.”);
`
`Implicit Networks, Inc. v. Juniper Networks, Inc., No. 3:10-cv-4234, Docket No. 92 at 2 (N.D.
`
`Cal. June 6, 2012) (“[U]nlike the non-infringement contentions required from [the defendant]—
`
`which hinge on [the defendant’s] insight into and understanding of the functionality of its own
`
`products—neither side has a better understanding of how or whether the prior art references and
`
`combinations asserted by [the defendant] disclose each of the claim elements at issue here.”).
`
`Intellectual Ventures further objects to this interrogatory as premature and as calling for
`
`expert discovery in advance of the dates set out in the Court’s Docket Control Order (D.I. 54)
`
`(hereinafter “Docket Control Order”) given the Defendants’ newly disclosed theories on claim
`
`construction. See Mirror Worlds Techs., LLC v. Apple Inc., Case No. 6:13-cv-419, 2014 U.S.
`
`Dist. LEXIS 196155, at *8-9 (E.D. Tex. Dec. 3, 2014) (“[I]t would be premature at this time to
`
`compel a response to all 24 of [defendant’s] prior art charts.”); SFA Systems, LLC v.
`
`Amazon.com, Inc. et al., No. 6:11-CV-52, Dkt. No. 400 at 2-3 (E.D. Tex. Apr. 11, 2013)
`
`(denying a motion to compel validity contentions without prejudice to re-raising the motion after
`
`expert reports had been disclosed). Defendants—not Intellectual Ventures—have proposed
`
`sixty claim terms for construction, and only provided their initial proposals for constructions last
`
`week. Given that claim construction has not yet been decided, IV objects to this interrogatory as
`
`
`
`3
`
`Exhibit 2121 Page 3
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`

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`premature on this independent basis as well. Intellectual Ventures further objects to this
`
`interrogatory as vague, ambiguous, and premature to the extent that it asks Intellectual Ventures
`
`to explain “the reason you contend such element is absent.” Nothing in this response shall be
`
`construed as an admission that Defendants have satisfied any burden with respect to invalidity or
`
`that that they have satisfied their obligation under the local rules to provide Invalidity
`
`Contentions.
`
`Based on Intellectual Ventures’ investigation to date, and subject to and without waiver
`
`of the foregoing general and specific objections, Intellectual Ventures responds as follows:
`
`None of the asserted claims of any of the Patents-in-Suit is invalid for any of the reasons
`
`set forth in Defendants’ Invalidity Contentions. Each claim of the patents-in-suit is presumed
`
`valid under 35 U.S.C. § 282. Defendants bear the burden of proving that each claim is invalid by
`
`clear and convincing evidence. See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372,
`
`1376 (Fed. Cir. 2009). Defendants have not met that burden, nor have they even set forth a
`
`prima facie case of invalidity, whether under theories of anticipation, obviousness, or failure to
`
`meet the requirements of 35 U.S.C. § 112. Indeed, Defendants’ Invalidity Contentions
`
`(“Invalidity Contentions”), which were served on March 14, 2017, do not set forth evidence
`
`sufficient to meet that burden with respect to any claim of the patents-in-suit on any ground,
`
`including 35 U.S.C. §§ 101, 102, 103, and 112.1
`
`
`1 Defendants’ Invalidity Contentions fail to comply with the Patent Local Rules for the Eastern District of Texas,
`including P.R. 3-3, in several ways. For example, with respect to Defendants’ contentions on obviousness grounds,
`Defendants’ Invalidity Contentions (a) do not identify adequate reasons, rationales, or motivations to combine
`references consistent with 35 U.S.C. § 103 and (b) purport to propose combinations of references without explaining
`what parts of those references should be combined with other references. Moreover, Appendix F is improper
`because it does not provide notice or adequate identification of Defendants’ contentions and should be stricken.
`Moreover, Defendants’ boilerplate statements such as “The above reference statements are exemplary only and are
`not intended to be limiting. For example [reference] also renders obvious [patent-in-suit] in combination with one
`of more of the other prior art references provided in the claim charts … and/or the prior art provided in Appendix F”
`are improper because they do not provide notice or adequate identification of Defendants’ contentions and should
`also be stricken. As another example, although Defendants rely on alleged prior art “systems” (e.g., OmniTRACS,
`4
`
`
`
`Exhibit 2121 Page 4
`
`

`

`Intellectual Ventures incorporates by reference the following documents:
`
`-
`
`-
`
`-
`
`-
`
`-
`
`-
`
`IPR2017-00729 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00741 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00743 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00750 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00787 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00859 Patent Owner Preliminary Response (June 9, 2017), Paper No. 6
`
`Intellectual Ventures also incorporates by reference its responses (current and future) to
`
`Interrogatory Nos. 4, 15 as well as its forthcoming expert reports responding to any expert
`
`reports on invalidity that will be served in accordance with the Docket Control Order.
`
`Intellectual Ventures reserves the right to supplement this response as fact discovery,
`
`expert discovery, and claim construction proceed, and to include assertions concerning
`
`secondary considerations of non-obviousness with respect to any of the claims of the patents-in-
`
`suit.
`
`First Supplemental Response to Interrogatory No. 14:
`
`This interrogatory continues to be premature and as calling for expert discovery in
`
`advance of the dates set out in the Court’s Docket Control Order (D.I. 54).
`
`Based on Intellectual Ventures’ investigation to date, and subject to and without waiver
`
`of the foregoing general and specific objections, Intellectual Ventures further responds as
`
`follows:
`
`None of the asserted claims of any of the Patents-in-Suit is invalid for any of the reasons
`
`set forth in Defendants’ Invalidity Contentions. Each claim of the patents-in-suit is presumed
`
`
`“FedEx Prior Art Systems”, and “UPS Prior Art Systems”) Defendants never adequately describe the features of
`those systems or provide any evidence that any of those systems were publicly available.
`5
`
`
`
`Exhibit 2121 Page 5
`
`

`

`valid under 35 U.S.C. § 282. Defendants bear the burden of proving that each claim is invalid by
`
`clear and convincing evidence. See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372,
`
`1376 (Fed. Cir. 2009). Defendants have not met that burden, nor have they even set forth a
`
`prima facie case of invalidity, whether under theories of anticipation, obviousness, or failure to
`
`meet the requirements of 35 U.S.C. § 112. Indeed, Defendants’ Invalidity Contentions
`
`(“Invalidity Contentions”), which were served on March 14, 2017, do not set forth evidence
`
`sufficient to meet that burden with respect to any claim of the patents-in-suit on any ground,
`
`including 35 U.S.C. §§ 101, 102, 103, and 112.2
`
`Intellectual Ventures incorporates by reference the following documents:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00729 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00741 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00743 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00750 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00750 Order Denying Institution (July 12, 2017), Paper No. 7
`
`IPR2017-00787 Patent Owner Preliminary Response (May 2, 2017), Paper No. 6
`
`IPR2017-00859 Patent Owner Preliminary Response (June 9, 2017), Paper No. 6
`
`
`2 Defendants’ Invalidity Contentions fail to comply with the Patent Local Rules for the Eastern District of Texas,
`including P.R. 3-3, in several ways. For example, with respect to Defendants’ obviousness contentions, Defendants’
`Invalidity Contentions (a) do not identify adequate reasons, rationales, or motivations to combine references
`consistent with 35 U.S.C. § 103, (b) purport to propose combinations of references without explaining what parts of
`those references should be combined with other references, and (c) do not even identify with particularity which
`combinations Defendants are relying on. As a second example, Appendix F is improper because it does not provide
`notice or adequate identification of Defendants’ contentions as to any of the references contained therein and should
`be stricken. Defendants’ boilerplate statements in various Appendices, such as “The above reference statements are
`exemplary only and are not intended to be limiting. For example [reference] also renders obvious [patent-in-suit] in
`combination with one of more of the other prior art references provided in the claim charts … and/or the prior art
`provided in Appendix F” are improper because they does not provide notice or adequate identification of
`Defendants’ contentions and should also be stricken. As another example, although Defendants rely on alleged
`prior art “systems” (e.g., OmniTRACS, “FedEx Prior Art Systems”, and “UPS Prior Art Systems”) Defendants
`never adequately describe those systems or provide any evidence that they were publicly available at any time.
`6
`
`
`
`Exhibit 2121 Page 6
`
`

`

`Intellectual Ventures also incorporates by reference its responses (current and future) to
`
`Interrogatories Nos. 4, 15 as well as its forthcoming expert reports responding to any expert
`
`reports on invalidity that will be served in accordance with the Docket Control Order.
`
`35 U.S.C. § 101
`
`The asserted claims are presumed valid. 35 U.S.C. § 282. Defendants have not met their
`
`burden to show by clear and convincing evidence that any of the asserted claims for any of the
`
`Patents-in-Suit are invalid under 35 U.S.C. § 101 for lack of eligible subject matter. Intellectual
`
`Ventures incorporates by reference its response to Interrogatory No. 15 below.
`
`35 U.S.C. §§ 102 AND 103
`
`The asserted claims are presumed valid. 35 U.S.C. § 282. Defendants have not shown
`
`that any of the asserted claims for any of the Patents-in-Suit are invalid under 35 U.S.C. § 102 as
`
`anticipated or 35 U.S.C. § 103 as obvious. Intellectual Ventures provides its initial response to
`
`Defendants’ Invalidity Contentions as follows. The allegations listed below are intended to be
`
`exemplary and responsive to what Defendants appear to be asserting at this juncture of the case,
`
`as Defendants provided in Defendants’ Invalidity Contentions, including the Appendices,
`
`without the benefit of full discovery or a claim construction ruling from the Court:
`
`
`
`’900 PATENT
`
`United States Patent No. 6,633,900 (the “’900 patent), titled Mobile Crew Management
`
`System for Distributing Work Order Assignments to Mobile Field Crew Units,” was filed on
`
`January 8, 1999 and issued on October 14, 2003. The ’900 patent’s inventors are Amir Khalessi
`
`and Sasan H. Ardalan.
`
`The ’900 patent is presumed valid under 35 U.S.C. § 282. Defendants bear the burden of
`
`proving that it is invalid by clear and convincing evidence, but they have not set forth evidence
`
`
`
`7
`
`Exhibit 2121 Page 7
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`

`

`sufficient to do so. None of the alleged prior art that Defendants contend invalidates the asserted
`
`claim of the ’900 patent—claim 1—invalidates that claim. Those assertions are addressed, in
`
`part, below.
`
`Defendants contend that claim 1 of the ’900 patent is anticipated and/or obvious in view
`
`of various combinations of the following thirteen prior art references:
`
` U.S. Patent No. 5,920,846 to Storch (“Storch”)
` U.S. Patent No. 4,922,516 to Butler (“Butler”)
` U.S. Patent No. 6,065,120 to Laursen (“Laursen”)
` U.S. Patent No. 6,748,318 to Jones (“Jones”)
` U.S. Patent No. 5,715,905 to Kaman (“Kaman”)
` U.S. Patent No. 5,724,243 to Westerlage (“Westerlage”)
` U.S. Patent No. 5,513,111 to Wortham (“Wortham”)
` PCT International Publication No. WO 96/27171 (“Kadaba”)
` U.S. Patent No. 6,073,062 to Hoshino (“Hoshino”)
` U.S. Patent No. 6,094,642 to Stephenson (“Stephenson”)
` OmniTRACS Mobile Communications system (“OmniTRACS”)
` UPS Systems
` FedEx Systems
`
`Defendants’
`
`Invalidity Contentions provide
`
`little guidance about
`
`the specific
`
`combinations of references that Defendants contend render obvious claim 1 of the ’900 patent.
`
`In each claim chart attached as Appendix A01-A09 to the Invalidity Contentions, Defendants set
`
`forth a primary reference which they contend “renders obvious claim 1 of the ‘900 patent, either
`
`alone or in combination with the following [references].” In most of the charts, Defendants
`
`contend that the primary reference may be combined with up to ten additional references.3 Thus,
`
`Defendants’ contentions contain thousands4 of possible combinations of references, with no
`
`indication as to how they contend a person of ordinary skill in the art would have combined the
`
`teachings of those references. Moreover, Defendants state that the thousands of reference
`
`
`3The two exceptions are Appendix A01 and Appendix A04. In Appendix A01, Defendants provide only two
`additional references. But in Appendix A04, Defendants provide eleven additional references.
`4 A primary reference can be combined with one or more of 10 references in (210-1) number of ways, which equals
`1,023 possible combinations.
`
`
`
`8
`
`Exhibit 2121 Page 8
`
`

`

`combinations that they have provided are “exemplary only and are not intended to be limiting,”
`
`and that the references can be combined with “one or more of the other prior art provided [in] the
`
`claim charts in [the other Appendices], and/or the prior art provided in Appendix F.” See
`
`Invalidity Contentions at Appendices A01-A09. Notwithstanding the impropriety of Appendix F
`
`(as inconsistent with the Patent Local Rules), Appendix F lists 44 additional references, none of
`
`which is described in any way. Thus, Defendants have failed to meet their obligation under
`
`Local Patent Rule 3.3(b), which requires that “[i]f a combination of items of prior art makes a
`
`claim obvious, each such combination, and the motivation to combine such items, must be
`
`identified.” Essentially, Defendants have failed to provide reasonable contentions that put
`
`Intellectual Ventures on notice of Defendants’ invalidity positions.
`
`To the extent Intellectual Ventures understands Defendants’ contentions set forth in the
`
`claim charts of Appendices A01-A09, Intellectual Ventures addresses the prior art as follows.
`
`A1. U.S. Patent No. 5,920,846 to Storch (“Storch”)
`
`Intellectual Ventures incorporates by reference the Patent Owner Preliminary Response
`
`filed in FedEx Corp. v. Intellectual Ventures II LLC, IPR2017-00741, Paper 6 (PTAB May 2,
`
`2017). Further:
`
` Storch does not anticipate claim 1 of the ’900 patent. Storch does not disclose, teach, or
`
`suggest several elements of that claim, including at least the following:
`
` “at least one mobile field unit” (claim 1)
`
` “(E) retrieving and presenting a list of assignments to the field crew” (claim 1)5
`
`Moreover, Defendants identify the same disclosure in Storch (i.e., Storch transmits the
`
`service order to the TAU, which appears on the screen) as allegedly teaching all of the following
`
`
`5 IV reserves the right to amend this list and all subsequent lists based on claim construction proceedings and as
`discovery continues.
`
`
`
`9
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`Exhibit 2121 Page 9
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`

`

`four elements: “(B) notifying the field crew of the assignment”; “(E) retrieving and presenting a
`
`list of assignments”, “(F) . . . retrieving detailed assignment data”, and “(G) displaying the
`
`detailed assignment data to the field crew”. However, that same disclosure cannot teach all of
`
`the elements B, E, F, and G. See, e.g., In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
`
`(finding no anticipation where one element of a prior art reference was mapped to two
`
`structurally distinct limitations of a claim). For example, to the extent that the disclosure
`
`allegedly teaches element B (“notifying the field crew of the assignment”) or element E
`
`(“retrieving and presenting a list of assignments”), it does not also teach element F (“. . .
`
`retrieving detailed assignment data”) and element G (“displaying the detailed assignment data to
`
`the field crew”) because no additional detailed assignment data is ever retrieved.
`
`Because Storch does not disclose all limitations of claim 1, claim 1 is not anticipated.
`
`Additionally, Storch alone or in view of Butler or Laursen6 does not render obvious claim
`
`1. As an initial matter, Defendants’ explanation that a skilled artisan would have combined any
`
`references because “one of ordinary skill would have recognized that these references and prior
`
`art systems contain similar disclosures directed to the same or similar problems found in
`
`information management” is insufficient because Defendants never explain why a person of
`
`ordinary skill would have had a reason to combine Storch’s embodiments alone or with any of
`
`Butler or Laursen including in the particular manner claimed. Moreover, Defendants have not
`
`identified a credible reason why a person of ordinary skill would have combined Storch with
`
`either Butler or Laursen.
`
`Further, the combination of Storch and Butler do not disclose all the limitations of claim
`
`1, which means that the combination cannot render claim 1 obvious. For example, Butler—like
`
`6 Although Defendants summarily state that other combinations with Storch may render claim 1 obvious,
`Defendants never chart those combinations. See Appendix A01. Accordingly, Intellectual Ventures cannot respond
`to such ambiguous, improper allegations.
`
`
`
`10
`
`Exhibit 2121 Page 10
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`

`

`Storch—fails to disclose the preamble’s “at least one mobile field unit” because Butler’s craft
`
`technician terminal must be physically connected to a subscriber’s landline via an RJ-11 cord in
`
`order to communicate with the technician access network, and therefore is not a “mobile field
`
`unit” as properly construed. Butler also fails to teach element E (“retrieving and presenting a list
`
`of assignments”) because Butler’s craft technician terminal only receives one message at a time.
`
`Finally—as in Storch—Defendants point to the same disclosure in Butler as allegedly teaching
`
`elements B, E, F, and G—the disclosure that Butler sends a single message the craft technician
`
`terminal and that message contains all of the data that is (or ever will be) sent with respect to that
`
`assignment. (See Butler at 8:58-66.) However, as explained above, that disclosure cannot teach
`
`all of the elements B, E, F, and G. See, e.g., In re Robertson, 169 F.3d at 745. Moreover, Butler
`
`also does not teach “retrieving detailed assignment data.” See Butler at 7:21-24, 14:7-14. For at
`
`least these reasons, the combination of Storch and Butler does not render obvious claim 1 of the
`
`’900 patent.
`
`The combination of Storch and Laursen also does not render obvious claim 1 of the ’900
`
`patent because Laursen does not disclose Storch’s missing limitations. Defendants rely on
`
`Laursen for the teaching of HTML/HTTP techniques and Defendants also summarily state that
`
`Laursen teaches elements C and D. Defendants, however, do not provide any explanation of
`
`how Laursen discloses or teaches any other element of claim 1, nor do they provide any credible
`
`reason (aside from the vague reference “involv[ing] communications between a mobile unit and
`
`a server”) why a person of ordinary skill would have combined Laursen with either Storch or
`
`Butler.
`
`Because Defendants have not—and cannot—meet their burden, claim 1 is also not
`
`obvious over Storch alone or in view of Butler or Laursen.
`
`
`
`11
`
`Exhibit 2121 Page 11
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`

`

`A2. U.S. Patent No. 6,748,318 to Jones (“Jones”)
`
`Intellectual Ventures incorporates by reference the Patent Owner Preliminary Response
`
`filed in FedEx Corp. v. Intellectual Ventures II LLC, IPR2017-00743, Paper 6 (PTAB May 2,
`
`2017).
`
`Jones does not anticipate claim 1. Jones does not disclose, teach, or suggest several
`
`elements of that claim, including at least the following:
`
` “(C) in response to the input of field crew login data, verifying field crew identity”
`
` “(D) notifying the field crew of successful login”
`
` “(F) in response to field crew input selecting an assignment from the list of
`
`assignments, retrieving detailed assignment data for the selected assignment”
`
` “(G) displaying the detailed assignment data to the field crew”
`
` Furthermore, to the extent that Defendants have argued that directions and map information
`
`constitute “the detailed assignment data,” Jones does not disclose element “(H) in response to
`
`field crew input identifying an action was taken with regard to the assignment, updating the
`
`detailed assignment data.”
`
`Because Jones does not disclose at least those elements, Jones does not anticipate claim
`
`1. As Defendants have already recognized in ArrivalStar S.A. v. Shipmatrix, Inc. et al., C.A. No.
`
`07-cv-0415 (W.D. Pa.), any alleged disclosure in Jones is not enabled and therefore Jones cannot
`
`anticipate for that separate reason. See, e.g., FDXIV00176533-176735 at FDXIV00176726-32.
`
`Moreover, Jones alone or in view of Kaman or Laursen does not render obvious claim 1.7
`
`As an initial matter, Defendants’ explanation that a skilled artisan would have combined any of
`
`
`7 Defendants only identify with particularity disclosures from Kaman and Laursen in support of their obviousness
`contentions. See Defendants’ Invalidity Contentions at A02. Because Defendants have not met their burden to show
`that Jones should be combined with any reference other than Kaman or Laursen, Intellectual Ventures limits this
`response to the disclosures and teachings of Jones in combination with Kaman or Laursen.
`12
`
`
`
`Exhibit 2121 Page 12
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`

`

`its references because “one of ordinary skill would have recognized that these references and
`
`prior art systems contain similar disclosures directed to the same or similar problems found in
`
`information management” is insufficient because Defendants never explain why a person of
`
`ordinary skill would have had a reason to combine Jones’ embodiments alone or with Kaman in
`
`the particular manner claimed. Defendants have not identified a credible reason why a person of
`
`ordinary skill would have combined Jones with Kaman. Moreover, Defendants have not
`
`explained how a person of ordinary skill would have combined Jones with Kaman to produce the
`
`claimed invention. For example, a person of ordinary skill in the art would not be motivated to
`
`implement Kaman’s security measures (e.g., determining the identity of a driver and verifying
`
`his or her credentials) in Jones’s system because access to Jones’s vehicle is already limited and
`
`the location of Jones’s vehicle is already known. The alleged invention of Jones depends on the
`
`public accessibility of the vehicle’s stop list. Finally, a person of ordinary skill would not have
`
`been motivated to combine Jones with Kaman because those references address very different
`
`problems—Jones is designed to provide information about a vehicle to the customers’ end users,
`
`whereas Kaman is directed to improved systems for vehicle maintenance on behalf of
`
`organizations that own the vehicles.
`
`Defendants rely on Kaman only for the teaching of login procedures but as discussed
`
`above, a person of ordinary skill would not have implemented Kaman’s login procedures with
`
`Jones’s system. Defendants rely on Laursen for the teaching of HTML/HTTP techniques and
`
`Defendants also summarily state that Laursen teaches elements C and D. Defendants, however,
`
`do not provide any explanation of how Laursen discloses or teaches any other element of claim
`
`1, nor do they provide any credible reason (aside from the references “involv[ing]
`
`communications between a mobile unit and a server”) why a person of ordinary skill would have
`
`
`
`13
`
`Exhibit 2121 Page 13
`
`

`

`combined Laursen with Jones (and/or Kaman). Because Defendants have not—and cannot meet
`
`their burden, claim 1 is not obvious over Jones alone or in view of Kaman or Laursen.
`
`A3. U.S. Patent No. 5,724,243 to Westerlage (“Westerlage”)
`
`Westerlage does not anticipate claim 1. Westerlage does not disclose, teach, or suggest
`
`several elements of that claim, including at least the following:
`
` “at least one mobile field unit”
`
` “(A) updating a database on the enterprise computing system to indicate an
`
`assignment has been assigned to the field crew”
`
` “(B) notifying the field crew of the assignment”
`
` “(C) in response to the input of field crew login data, verifying field crew identity”
`
` “(D) notifying the field crew of successful login”
`
` “(F) in response to field crew input selecting an assignment from the list of
`
`assignments, retrieving detailed assignment data for the selected assignment”
`
` “(G) displaying the detailed assignment data to the field crew”
`
`Moreover, Defendants’ contentions improperly identify the same disclosure for elements F and
`
`G as they do for element E. See, e.g., In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
`
`Furthermore, to the extent that Defendants have argued that directions and map information
`
`constitute “the detailed assignment data,” Jones does not disclose element “(H) in response to
`
`field crew input identifying an action was taken with regard to the assignment, updating the
`
`detailed assignment data.”
`
`Because Westerlage does not disclose at least those elements, Westerlage does not
`
`anticipate claim 1.
`
`
`
`14
`
`Exhibit 2121 Page 14
`
`

`

`Moreover, Westerlage alone or in view of Kaman and/or Wortham does not render
`
`obvious claim 1.8 As an initial matter, Defendants’ explanation that a skilled artisan would have
`
`combined those references because “one of ordinary skill would have recognized that these
`
`references and prior art systems contain similar disclosures directed to the same or similar
`
`problems found in information management” is insufficient because Defendants never explain
`
`why a person of ordinary skill would have had a reason to combine Westerlage’s embodiments
`
`alone or with Kaman or Wortham in the particular manner claimed. For example, Defendants’
`
`contention that Westerlage and Kaman are in the “same field . . . (e.g., organizations involving
`
`drivers and vehicles”) does not explain why a person of ordinary skill would have combined
`
`their teachings. Moreover, Defendants have not explained how a person of ordinary skill would
`
`have combined Westerlage with Kaman to produce the claimed invention. Furthermore, a
`
`person of ordinary skill would not have been motivated to combine Westerlage with Kaman
`
`because those references address very different problems—Westerlage is designed to provide
`
`information about the expected time of arrival of a vehicle, whereas Kaman is directed to
`
`improved systems for vehicle maintenance on behalf of organizations that own the vehicles.
`
`Similarly, Defendants have not identified a credible reason why a person of ordinary skill
`
`would have combined Westerlage with Wortham. Defendants’ contention that “both references
`
`are in the same field and directed to the same problem” does not explain how or why a person of
`
`skill in the art would have combined them. In fact, contrary to Defendants’ claims, the
`
`references are actually directed to solving different problems—for example, whereas Westerlage
`
`is directed to providing information about the destination to the vehicle, Wortham is directed to
`
`
`8 Defendants only identify with particularity

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