`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`Civil Action No. 2:16-cv-00980-JRG
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`JURY TRIAL DEMANDED
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`
`
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`INTELLECTUAL VENTURES II LLC,
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`
`
`
`
`Plaintiff,
`
`v.
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`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
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`Ventures II LLC (“Intellectual Ventures”) hereby makes the following first supplemental
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`objections and responses to Defendants’ Second Set of Interrogatories (Nos. 14-15). Intellectual
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`Ventures reserves the right to further supplement or amend these objections and responses to the
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`extent allowed by the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
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`Court’s Docket Control Order (D.I. 54) and Discovery Order (D.I. 55) in this case.
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`GENERAL OBJECTIONS
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`Intellectual Ventures incorporates by reference its general objections to Defendants’ First
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`Set of Interrogatories (Nos. 1-13) served on April 19, 2017, which apply to each interrogatory
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`
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`1
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`Exhibit 2121 Page 1
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`IV Exhibit 2121
`FedEx v. IV
`Case IPR2017-02028
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`
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`regardless of whether the general objections are specifically incorporated into the specific
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`objections and responses below.
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`SPECIFIC OBJECTIONS AND RESPONSES
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`Interrogatory No. 14:
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`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).
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`Response to Interrogatory No. 14:
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`Intellectual Ventures objects to this interrogatory to the extent it calls for information
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`protected from discovery by the attorney-client privilege and/or the work product doctrine.
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`Intellectual Ventures further objects to this request as overly broad and improperly calling for the
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`disclosure of attorney work product to the extent that it seeks information concerning Intellectual
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`Ventures’ pre-suit investigations concerning the Patents-in-Suit. See, e.g., Fed. R. Civ. P.
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`26(b)(3)(A). Intellectual Ventures further objects to this request to the extent it calls for
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`information not in its possession, custody, or control and specifically information that is already
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`in Defendants’ possession, custody, or control, or otherwise equally available to Defendants.
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`Intellectual Ventures further objects to this interrogatory as compound, because it seeks a
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`response to “each claim element” that is absent from “any prior art reference asserted by
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`Defendants” as well as the “reason you contend such element is absent,” (which includes 90
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`charts and thousands of combinations of references), and therefore contains multiple discrete
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`subparts, each of which counts towards Defendants’ total number of interrogatories.
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`Intellectual Ventures further objects to this interrogatory as overbroad and unduly
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`burdensome. Here, this interrogatory is particularly overbroad and unduly burdensome as it calls
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`
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`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-
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`Suit, particularly when Defendants are unlikely to be able to proceed to trial with all of those
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`references and combinations. See Mirror Worlds Techs., LLC v. Apple Inc., Case No. 6:13-cv-
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`419, 2014 U.S. Dist. LEXIS 196155, at *8-9 (E.D. Tex. Dec. 3, 2014) (“Requiring [plaintiff] to
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`respond to all of [defendant’s] charted prior art references would place a larger burden on
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`[plaintiff] than [defendant] faced in responding to [plaintiff’s] non-infringement contentions.”);
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`Implicit Networks, Inc. v. Juniper Networks, Inc., No. 3:10-cv-4234, Docket No. 92 at 2 (N.D.
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`Cal. June 6, 2012) (“[U]nlike the non-infringement contentions required from [the defendant]—
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`which hinge on [the defendant’s] insight into and understanding of the functionality of its own
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`products—neither side has a better understanding of how or whether the prior art references and
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`combinations asserted by [the defendant] disclose each of the claim elements at issue here.”).
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`Intellectual Ventures further objects to this interrogatory as premature and as calling for
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`expert discovery in advance of the dates set out in the Court’s Docket Control Order (D.I. 54)
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`(hereinafter “Docket Control Order”) given the Defendants’ newly disclosed theories on claim
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`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
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`compel a response to all 24 of [defendant’s] prior art charts.”); SFA Systems, LLC v.
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`Amazon.com, Inc. et al., No. 6:11-CV-52, Dkt. No. 400 at 2-3 (E.D. Tex. Apr. 11, 2013)
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`(denying a motion to compel validity contentions without prejudice to re-raising the motion after
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`expert reports had been disclosed). Defendants—not Intellectual Ventures—have proposed
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`sixty claim terms for construction, and only provided their initial proposals for constructions last
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`week. Given that claim construction has not yet been decided, IV objects to this interrogatory as
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`
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`3
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`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
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`interrogatory as vague, ambiguous, and premature to the extent that it asks Intellectual Ventures
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`to explain “the reason you contend such element is absent.” Nothing in this response shall be
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`construed as an admission that Defendants have satisfied any burden with respect to invalidity or
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`that that they have satisfied their obligation under the local rules to provide Invalidity
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`Contentions.
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`Based on Intellectual Ventures’ investigation to date, and subject to and without waiver
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`of the foregoing general and specific objections, Intellectual Ventures responds as follows:
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`None of the asserted claims of any of the Patents-in-Suit is invalid for any of the reasons
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`set forth in Defendants’ Invalidity Contentions. Each claim of the patents-in-suit is presumed
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`valid under 35 U.S.C. § 282. Defendants bear the burden of proving that each claim is invalid by
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`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
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`prima facie case of invalidity, whether under theories of anticipation, obviousness, or failure to
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`meet the requirements of 35 U.S.C. § 112. Indeed, Defendants’ Invalidity Contentions
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`(“Invalidity Contentions”), which were served on March 14, 2017, do not set forth evidence
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`sufficient to meet that burden with respect to any claim of the patents-in-suit on any ground,
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`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
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`
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`Exhibit 2121 Page 4
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`
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`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
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`Interrogatory Nos. 4, 15 as well as its forthcoming expert reports responding to any expert
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`reports on invalidity that will be served in accordance with the Docket Control Order.
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`Intellectual Ventures reserves the right to supplement this response as fact discovery,
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`expert discovery, and claim construction proceed, and to include assertions concerning
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`secondary considerations of non-obviousness with respect to any of the claims of the patents-in-
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`suit.
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`First Supplemental Response to Interrogatory No. 14:
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`This interrogatory continues to be premature and as calling for expert discovery in
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`advance of the dates set out in the Court’s Docket Control Order (D.I. 54).
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`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
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`follows:
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`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
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`
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`Exhibit 2121 Page 5
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`
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`valid under 35 U.S.C. § 282. Defendants bear the burden of proving that each claim is invalid by
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`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
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`sufficient to meet that burden with respect to any claim of the patents-in-suit on any ground,
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`including 35 U.S.C. §§ 101, 102, 103, and 112.2
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`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
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`
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`Exhibit 2121 Page 6
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`
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`Intellectual Ventures also incorporates by reference its responses (current and future) to
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`Interrogatories Nos. 4, 15 as well as its forthcoming expert reports responding to any expert
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`reports on invalidity that will be served in accordance with the Docket Control Order.
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`35 U.S.C. § 101
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`The asserted claims are presumed valid. 35 U.S.C. § 282. Defendants have not met their
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`burden to show by clear and convincing evidence that any of the asserted claims for any of the
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`Patents-in-Suit are invalid under 35 U.S.C. § 101 for lack of eligible subject matter. Intellectual
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`Ventures incorporates by reference its response to Interrogatory No. 15 below.
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`35 U.S.C. §§ 102 AND 103
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`The asserted claims are presumed valid. 35 U.S.C. § 282. Defendants have not shown
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`that any of the asserted claims for any of the Patents-in-Suit are invalid under 35 U.S.C. § 102 as
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`anticipated or 35 U.S.C. § 103 as obvious. Intellectual Ventures provides its initial response to
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`Defendants’ Invalidity Contentions as follows. The allegations listed below are intended to be
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`exemplary and responsive to what Defendants appear to be asserting at this juncture of the case,
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`as Defendants provided in Defendants’ Invalidity Contentions, including the Appendices,
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`without the benefit of full discovery or a claim construction ruling from the Court:
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`
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`’900 PATENT
`
`United States Patent No. 6,633,900 (the “’900 patent), titled Mobile Crew Management
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`System for Distributing Work Order Assignments to Mobile Field Crew Units,” was filed on
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`January 8, 1999 and issued on October 14, 2003. The ’900 patent’s inventors are Amir Khalessi
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`and Sasan H. Ardalan.
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`The ’900 patent is presumed valid under 35 U.S.C. § 282. Defendants bear the burden of
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`proving that it is invalid by clear and convincing evidence, but they have not set forth evidence
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`
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`7
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`Exhibit 2121 Page 7
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`
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`sufficient to do so. None of the alleged prior art that Defendants contend invalidates the asserted
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`claim of the ’900 patent—claim 1—invalidates that claim. Those assertions are addressed, in
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`part, below.
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`Defendants contend that claim 1 of the ’900 patent is anticipated and/or obvious in view
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`of various combinations of the following thirteen prior art references:
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` 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’
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`Invalidity Contentions provide
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`little guidance about
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`the specific
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`combinations of references that Defendants contend render obvious claim 1 of the ’900 patent.
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`In each claim chart attached as Appendix A01-A09 to the Invalidity Contentions, Defendants set
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`forth a primary reference which they contend “renders obvious claim 1 of the ‘900 patent, either
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`alone or in combination with the following [references].” In most of the charts, Defendants
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`contend that the primary reference may be combined with up to ten additional references.3 Thus,
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`Defendants’ contentions contain thousands4 of possible combinations of references, with no
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`indication as to how they contend a person of ordinary skill in the art would have combined the
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`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
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`Exhibit 2121 Page 8
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`
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`combinations that they have provided are “exemplary only and are not intended to be limiting,”
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`and that the references can be combined with “one or more of the other prior art provided [in] the
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`claim charts in [the other Appendices], and/or the prior art provided in Appendix F.” See
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`Invalidity Contentions at Appendices A01-A09. Notwithstanding the impropriety of Appendix F
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`(as inconsistent with the Patent Local Rules), Appendix F lists 44 additional references, none of
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`which is described in any way. Thus, Defendants have failed to meet their obligation under
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`Local Patent Rule 3.3(b), which requires that “[i]f a combination of items of prior art makes a
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`claim obvious, each such combination, and the motivation to combine such items, must be
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`identified.” Essentially, Defendants have failed to provide reasonable contentions that put
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`Intellectual Ventures on notice of Defendants’ invalidity positions.
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`To the extent Intellectual Ventures understands Defendants’ contentions set forth in the
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`claim charts of Appendices A01-A09, Intellectual Ventures addresses the prior art as follows.
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`A1. U.S. Patent No. 5,920,846 to Storch (“Storch”)
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`Intellectual Ventures incorporates by reference the Patent Owner Preliminary Response
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`filed in FedEx Corp. v. Intellectual Ventures II LLC, IPR2017-00741, Paper 6 (PTAB May 2,
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`2017). Further:
`
` Storch does not anticipate claim 1 of the ’900 patent. Storch does not disclose, teach, or
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`suggest several elements of that claim, including at least the following:
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` “at least one mobile field unit” (claim 1)
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` “(E) retrieving and presenting a list of assignments to the field crew” (claim 1)5
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`Moreover, Defendants identify the same disclosure in Storch (i.e., Storch transmits the
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`service order to the TAU, which appears on the screen) as allegedly teaching all of the following
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`5 IV reserves the right to amend this list and all subsequent lists based on claim construction proceedings and as
`discovery continues.
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`
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`9
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`Exhibit 2121 Page 9
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`
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`four elements: “(B) notifying the field crew of the assignment”; “(E) retrieving and presenting a
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`list of assignments”, “(F) . . . retrieving detailed assignment data”, and “(G) displaying the
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`detailed assignment data to the field crew”. However, that same disclosure cannot teach all of
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`the elements B, E, F, and G. See, e.g., In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
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`(finding no anticipation where one element of a prior art reference was mapped to two
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`structurally distinct limitations of a claim). For example, to the extent that the disclosure
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`allegedly teaches element B (“notifying the field crew of the assignment”) or element E
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`(“retrieving and presenting a list of assignments”), it does not also teach element F (“. . .
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`retrieving detailed assignment data”) and element G (“displaying the detailed assignment data to
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`the field crew”) because no additional detailed assignment data is ever retrieved.
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`Because Storch does not disclose all limitations of claim 1, claim 1 is not anticipated.
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`Additionally, Storch alone or in view of Butler or Laursen6 does not render obvious claim
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`1. As an initial matter, Defendants’ explanation that a skilled artisan would have combined any
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`references because “one of ordinary skill would have recognized that these references and prior
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`art systems contain similar disclosures directed to the same or similar problems found in
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`information management” is insufficient because Defendants never explain why a person of
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`ordinary skill would have had a reason to combine Storch’s embodiments alone or with any of
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`Butler or Laursen including in the particular manner claimed. Moreover, Defendants have not
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`identified a credible reason why a person of ordinary skill would have combined Storch with
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`either Butler or Laursen.
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`Further, the combination of Storch and Butler do not disclose all the limitations of claim
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`1, which means that the combination cannot render claim 1 obvious. For example, Butler—like
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`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.
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`
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`10
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`Exhibit 2121 Page 10
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`
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`Storch—fails to disclose the preamble’s “at least one mobile field unit” because Butler’s craft
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`technician terminal must be physically connected to a subscriber’s landline via an RJ-11 cord in
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`order to communicate with the technician access network, and therefore is not a “mobile field
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`unit” as properly construed. Butler also fails to teach element E (“retrieving and presenting a list
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`of assignments”) because Butler’s craft technician terminal only receives one message at a time.
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`Finally—as in Storch—Defendants point to the same disclosure in Butler as allegedly teaching
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`elements B, E, F, and G—the disclosure that Butler sends a single message the craft technician
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`terminal and that message contains all of the data that is (or ever will be) sent with respect to that
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`assignment. (See Butler at 8:58-66.) However, as explained above, that disclosure cannot teach
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`all of the elements B, E, F, and G. See, e.g., In re Robertson, 169 F.3d at 745. Moreover, Butler
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`also does not teach “retrieving detailed assignment data.” See Butler at 7:21-24, 14:7-14. For at
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`least these reasons, the combination of Storch and Butler does not render obvious claim 1 of the
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`’900 patent.
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`The combination of Storch and Laursen also does not render obvious claim 1 of the ’900
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`patent because Laursen does not disclose Storch’s missing limitations. Defendants rely on
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`Laursen for the teaching of HTML/HTTP techniques and Defendants also summarily state that
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`Laursen teaches elements C and D. Defendants, however, do not provide any explanation of
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`how Laursen discloses or teaches any other element of claim 1, nor do they provide any credible
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`reason (aside from the vague reference “involv[ing] communications between a mobile unit and
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`a server”) why a person of ordinary skill would have combined Laursen with either Storch or
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`Butler.
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`Because Defendants have not—and cannot—meet their burden, claim 1 is also not
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`obvious over Storch alone or in view of Butler or Laursen.
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`
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`11
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`Exhibit 2121 Page 11
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`
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`A2. U.S. Patent No. 6,748,318 to Jones (“Jones”)
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`Intellectual Ventures incorporates by reference the Patent Owner Preliminary Response
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`filed in FedEx Corp. v. Intellectual Ventures II LLC, IPR2017-00743, Paper 6 (PTAB May 2,
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`2017).
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`Jones does not anticipate claim 1. Jones does not disclose, teach, or suggest several
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`elements of that claim, including at least the following:
`
` “(C) in response to the input of field crew login data, verifying field crew identity”
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` “(D) notifying the field crew of successful login”
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` “(F) in response to field crew input selecting an assignment from the list of
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`assignments, retrieving detailed assignment data for the selected assignment”
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` “(G) displaying the detailed assignment data to the field crew”
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` Furthermore, to the extent that Defendants have argued that directions and map information
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`constitute “the detailed assignment data,” Jones does not disclose element “(H) in response to
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`field crew input identifying an action was taken with regard to the assignment, updating the
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`detailed assignment data.”
`
`Because Jones does not disclose at least those elements, Jones does not anticipate claim
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`1. As Defendants have already recognized in ArrivalStar S.A. v. Shipmatrix, Inc. et al., C.A. No.
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`07-cv-0415 (W.D. Pa.), any alleged disclosure in Jones is not enabled and therefore Jones cannot
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`anticipate for that separate reason. See, e.g., FDXIV00176533-176735 at FDXIV00176726-32.
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`Moreover, Jones alone or in view of Kaman or Laursen does not render obvious claim 1.7
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`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
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`
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`Exhibit 2121 Page 12
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`
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`its references because “one of ordinary skill would have recognized that these references and
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`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
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`claimed invention. For example, a person of ordinary skill in the art would not be motivated to
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`implement Kaman’s security measures (e.g., determining the identity of a driver and verifying
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`his or her credentials) in Jones’s system because access to Jones’s vehicle is already limited and
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`the location of Jones’s vehicle is already known. The alleged invention of Jones depends on the
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`public accessibility of the vehicle’s stop list. Finally, a person of ordinary skill would not have
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`been motivated to combine Jones with Kaman because those references address very different
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`problems—Jones is designed to provide information about a vehicle to the customers’ end users,
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`whereas Kaman is directed to improved systems for vehicle maintenance on behalf of
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`organizations that own the vehicles.
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`Defendants rely on Kaman only for the teaching of login procedures but as discussed
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`above, a person of ordinary skill would not have implemented Kaman’s login procedures with
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`Jones’s system. Defendants rely on Laursen for the teaching of HTML/HTTP techniques and
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`Defendants also summarily state that Laursen teaches elements C and D. Defendants, however,
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`do not provide any explanation of how Laursen discloses or teaches any other element of claim
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`1, nor do they provide any credible reason (aside from the references “involv[ing]
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`communications between a mobile unit and a server”) why a person of ordinary skill would have
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`
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`13
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`Exhibit 2121 Page 13
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`
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`combined Laursen with Jones (and/or Kaman). Because Defendants have not—and cannot meet
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`their burden, claim 1 is not obvious over Jones alone or in view of Kaman or Laursen.
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`A3. U.S. Patent No. 5,724,243 to Westerlage (“Westerlage”)
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`Westerlage does not anticipate claim 1. Westerlage does not disclose, teach, or suggest
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`several elements of that claim, including at least the following:
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` “at least one mobile field unit”
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` “(A) updating a database on the enterprise computing system to indicate an
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`assignment has been assigned to the field crew”
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` “(B) notifying the field crew of the assignment”
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` “(C) in response to the input of field crew login data, verifying field crew identity”
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` “(D) notifying the field crew of successful login”
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` “(F) in response to field crew input selecting an assignment from the list of
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`assignments, retrieving detailed assignment data for the selected assignment”
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` “(G) displaying the detailed assignment data to the field crew”
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`Moreover, Defendants’ contentions improperly identify the same disclosure for elements F and
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`G as they do for element E. See, e.g., In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
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`Furthermore, to the extent that Defendants have argued that directions and map information
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`constitute “the detailed assignment data,” Jones does not disclose element “(H) in response to
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`field crew input identifying an action was taken with regard to the assignment, updating the
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`detailed assignment data.”
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`Because Westerlage does not disclose at least those elements, Westerlage does not
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`anticipate claim 1.
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`14
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`Exhibit 2121 Page 14
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`Moreover, Westerlage alone or in view of Kaman and/or Wortham does not render
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`obvious claim 1.8 As an initial matter, Defendants’ explanation that a skilled artisan would have
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`combined those references because “one of ordinary skill would have recognized that these
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`references and prior art systems contain similar disclosures directed to the same or similar
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`problems found in information management” is insufficient because Defendants never explain
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`why a person of ordinary skill would have had a reason to combine Westerlage’s embodiments
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`alone or with Kaman or Wortham in the particular manner claimed. For example, Defendants’
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`contention that Westerlage and Kaman are in the “same field . . . (e.g., organizations involving
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`drivers and vehicles”) does not explain why a person of ordinary skill would have combined
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`their teachings. Moreover, Defendants have not explained how a person of ordinary skill would
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`have combined Westerlage with Kaman to produce the claimed invention. Furthermore, a
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`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
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`information about the expected time of arrival of a vehicle, whereas Kaman is directed to
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`improved systems for vehicle maintenance on behalf of organizations that own the vehicles.
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`Similarly, Defendants have not identified a credible reason why a person of ordinary skill
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`would have combined Westerlage with Wortham. Defendants’ contention that “both references
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`are in the same field and directed to the same problem” does not explain how or why a person of
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`skill in the art would have combined them. In fact, contrary to Defendants’ claims, the
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`references are actually directed to solving different problems—for example, whereas Westerlage
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`is directed to providing information about the destination to the vehicle, Wortham is directed to
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`8 Defendants only identify with particularity