Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Group Art Unit: To Be Assigned
`
`Examiner: To Be Assigned
`
`In re Ex Parle Reexamination of:
`
`U. S. Patent No. 8,494,581
`
`Issued: July 23, 2013
`
`Named Inventors: Frank A. Barbosa, el al.
`
`Control Number: To Be Assigned
`
`Filed: August 25, 2009
`
`Title: SYSTEMS AND METHODS FOR
`
`MANAGEMENT OF MOBILE FIELD
`
`ASSETS VIA WIRELESS HANDHELD
`
`DEVICES
`
`VVVVVVVVVVVVVVVV
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`REQUEST FOR EX PARTE REEXAMINATION
`
`FedEx Corporation (“FedEx” or “Requester”) respectfully request ex parle reexamination
`
`of US. Patent No. 8,494,581 (“the ’581 patent,” Ex. A), assigned to Intellectual Ventures II,
`
`LLC (“Intellectual Ventures” or “Patent Owner”). Prior art renders issued claims 18-20, and 24
`
`unpatentable under 35 U.S.C. § 103.
`
`On January 19, 2017, Requester filed a petition for Inter Parles Review (“IPR”) of the
`
`’581 patent, 1PR2017-00729, seeking review of claims 1-24. See D-l. On July 25, 2017, the
`
`Patent Trial and Appeal Board (“PTAB” or “Board”) instituted trial on claims 1-17 of the ’581
`
`patent and declined to institute trial on claims 18-24, determining that Petitioner failed to identify
`
`the structure for one of the means-plus-function elements of independent claim 18. See D-2. On
`
`Exhibit 2125 Page 1
`
`IV Exhibit 2125
`FedEx v. N
`Case |PR2017-02030
`
`Exhibit 2125 Page 1
`
`IV Exhibit 2125
`FedEx v. IV
`Case IPR2017-02030
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`August 31, 2017, Requester filed a second petition for IPR on the ’581 patent, 1PR2017-02030,
`
`challenging claims 18-20 and 24. See D-2. Intellectual Ventures filed a Patent Owner
`
`Preliminary Response in this proceeding on December 13, 2017, but the Board has not yet issued
`
`a decision on institution.
`
`Regardless of the lPR proceedings, as this Request demonstrates, prior art renders each of
`
`claims 18-24 unpatentable under 35 U.S.C. §§ 103. Indeed, prior art references, including at least
`
`Rappaporl, Khalessi, Bernard, and Brockman, raise substantial new questions of patentability
`
`(“SNQs”) with respect to these claims. FedEx thus respectfully requests that the Office grant this
`
`request for ex parte reexamination of the ’581 patent, reexamine claims 18-20 and 24, and issue
`
`an initial Office Action rejecting claims 18-20 and 24 over at least the prior art discussed in this
`
`Request.
`
`ii
`Exhibit 2125 Page 2
`
`Exhibit 2125 Page 2
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`Attachments
`
`(1) Certificate of Service to Patent Owner.
`(2) Information Disclosure Statement and Form PTO/SB/08.
`
`Exhibits
`
`The ’581 Patent, Declaration, and Prosecution Histories
`
`Ex. A
`
`Ex. B
`
`Prior Art
`
`PA-l
`
`PA-2
`
`PA-3
`
`PA-4
`
`US. Patent No. 8,494,581 to Frank A. Barbosa et al. (“Barbosa” or “the
`’581 patent”).
`Patent Prosecution History of US. Patent No. 8,494,581.
`
`US. Patent No. 6,971,063 to Rappaport et al. (“Rappaport”).
`US. Patent No. 6,633,900 to Khalessi et al. (“Khalessi”).
`US. Patent No. 6,125,356 to Brockman et al. (“Brockman”).
`US. Patent No. 5,497,339 to Bernard (“Bernard”).
`
`’581 Inter Partes Review Documents
`
`D-1:
`
`D-2:
`
`D-3:
`
`D-4:
`
`D-5:
`
`Petition for Inter Partes Review in IPR2017-00729, filed January 19, 2017.
`Petition for Inter Partes Review in IPR2017-0203 0, filed August 31, 2017.
`Institution Decision in IPR2017-00729, dated July 25, 2017.
`Declaration of Tal Lavian, Exhibit 1006, IPR2017-00729, dated January 19, 2017.
`Declaration of Tal Lavian, Exhibit 1005, IPR2017-02030, dated August 30, 2017.
`
`Litigation Documents
`
`E-1:
`
`E-2:
`
`E-3
`
`Complaint filed in Intellectual Ventures II LLC v. FedEx Corp. et al., Case No.
`2:16-cv-980 (E.D. Tex).
`Markman Order in Intellectual Ventures II LLC v. FedEx Corp. et al., Case No.
`2:16-cv-980 (E.D. Tex).
`Exhibit D to Plaintiff Intellectual Venture II LLC’s Infringement Contentions in
`Intellectual Ventures IILLC v. FedEx Corp. et al., Case No. 2: 16-cv-980 (E.D.
`Tex).
`
`iii
`Exhibit 2125 Page 3
`
`Exhibit 2125 Page 3
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .............................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Request for Ex Parte Reexamination ...................................................................... 1
`
`Certification Regarding Statutory Estoppel Provisions .......................................... 2
`
`The ’581 Patent Is in Litigation .............................................................................. 2
`
`IPR Proceedings Against the ’581 Patent ............................................................... 2
`
`Request for Expedited Reexamination .................................................................... 3
`
`Reservation of Rights .............................................................................................. 3
`
`SUTVIMARY OF THE ARGUMENT ................................................................................. 4
`
`OVERVIEW OF THE ’581 PATENT AND ITS PROSECUTION HISTORY ................ 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Specification ........................................................................................................... 6
`
`Issued Claims .......................................................................................................... 8
`
`Prosecution History ................................................................................................. 9
`
`Level of Ordinary Skill in the Art ......................................................................... 10
`
`Claim Construction in Reexamination .................................................................. 10
`
`II.
`
`III.
`
`IV.
`
`IDENTIFICATION OF PRIOR ART AND EXISTENCE OF SUB STANTIAL
`
`NEW QUESTIONS OF PATENTABILITY OF THE CLAHVIS OF THE ’581
`PATENT ........................................................................................................................... 16
`
`A.
`
`B.
`
`Identification of the Prior Art ............................................................................... 16
`
`Summary of the Substantial New Questions of Patentability ............................... 17
`
`1.
`
`2.
`
`3.
`
`4.
`
`Rappaport raises an SNQ .......................................................................... 18
`
`The combined teachings of Rappaporl and Khalessi raise an SNQ
`with respect to claim 20 because they disclose all of the recited
`claim elements and render claim 20 of the ’581 patent obvious ............... 20
`
`The combined teachings of Brockmcm and Bernard raise an SNQ
`with respect to claims 18, 19 and 24 because they disclose all of
`the recited claim elements and render these claims of the ’581
`
`patent obvious ........................................................................................... 21
`
`The combined teachings of Brockmcm, Bernard, and Khalessi raise
`an SNQ with respect to claim 20 because they disclose all of the
`recited claim elements and render claim 20 of the ’581 patent
`obvious ...................................................................................................... 23
`
`iv
`Exhibit 2125 Page 4
`
`Exhibit 2125 Page 4
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`PROPOSED REJECTIONS OF THE ’581 PATENT ...................................................... 24
`
`VI.
`
`DETAILED EXPLANATION OF THE PROPOSED REJECTIONS OF THE
`
`CLAHVIS OF THE ’581 PATENT .................................................................................... 24
`
`A.
`
`Rappaporl renders claims 18, 19, and 24 obvious ................................................ 24
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Overview of Rappaport ............................................................................ 24
`
`It would have been obvious to combine Rappaporl’s disclosed
`embodiments ............................................................................................. 26
`
`Rappaporl discloses an apparatus, comprising: means for
`establishing a two-way communication channel between a server
`and at least one handheld device located at a field geographically
`distant from the server [claim 18.0] .......................................................... 27
`
`Rappaporl discloses or renders obvious means for accessing a
`program stored at the server to enable an assessment at the field
`using the at least one handheld device [claim 18.1]. ................................ 32
`
`Rappaporl discloses or renders obvious means for managing data
`collected at the field using the at least one handheld device
`responsive to program [claim 18.2] .......................................................... 41
`
`Rappaport discloses or renders obvious means for determining a
`geographic location of the at least one handheld device [claim
`18.3] .......................................................................................................... 50
`
`Rappaporl discloses or renders obvious means for enabling
`communicating the data collected at the field and the geographic
`location of the at least one handheld device between the at least
`
`one handheld device and other devices or the server [claim 18.4] ........... 52
`
`Rappaporl discloses or renders obvious means for tracking a
`location of the at least one handheld device [claim 19.0] ......................... 54
`
`Rappaporl discloses or renders obvious means for providing data
`to the server for analysis, and means for retrieving enhanced data
`from the server for use in conducting the field assessment [claim
`24.0] .......................................................................................................... 55
`
`B.
`
`Rappaporl and Khalessi render claim 20 obvious ................................................ 58
`
`1.
`
`2.
`
`3.
`
`Overview of Khalessz' ................................................................................ 58
`
`Rationale to combine Rappaport and Khalessi ......................................... 59
`
`Rappaporl and Khalessi disclose or render obvious means for
`enabling updating field operation assignments for each of the at
`least one handheld device [claim 20.0] ..................................................... 60
`
`C.
`
`Brockmcm and Bernard render claims 18, 19, and 24 obvious ............................. 64
`
`1.
`
`Overview of Brockman ............................................................................. 64
`
`v
`
`Exhibit 2125 Page 5
`
`Exhibit 2125 Page 5
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`Overview of Bernard ................................................................................ 67
`
`Rationale to Combine Brockman and Bernard .................................
`
`........ 68
`
`Bernard and Brockman disclose or render obvious means for
`
`establishing a two-way communication channel between a server
`and at least one handheld device located at a field geographically
`distant from the server [claim 18.0] ..................................................
`
`........ 69
`
`Brockman and Bernard disclose or render obvious means for
`
`accessing a program stored at the server to enable an assessment at
`the field using the at least one handheld device [claim 18.1] ...........
`
`........ 76
`
`Brockman and Bernard disclose or render obvious means for
`
`managing data collected at the field using the at least one handheld
`device responsive to program [claim 18.2] .......................................
`
`........ 84
`
`Brockman and Bernard disclose or render obvious means for
`
`determining a geographic location of the at least one handheld
`device [claim 18.3] ............................................................................
`
`........ 92
`
`Brockman and Bernard disclose or render obvious means for
`
`enabling communicating the data collected at the field and the
`geographic location of the at least one handheld device between
`the at least one handheld device and other devices or the server
`
`[claim 18.4] .......................................................................................
`
`Brockman and Bernard disclose or render obvious means for
`
`tracking a location of the at least one handheld device [claim 19.0]
`
`........ 94
`
`........ 97
`
`10.
`
`Brockman and Bernard disclose or render obvious means for
`
`providing data to the server for analysis; and means for retrieving
`enhanced data from the server for use in conducting the field
`assessment [claim 24.0] ....................................................................
`
`........ 99
`
`Brockman and Bernard in view of Knalessi render claim 20 obvious ............... 101
`
`1.
`
`2.
`
`Rationale to combine Brockman and Bernard with Khalessi ...........
`
`...... 101
`
`Brockman and Bernard in view of Knalessi disclose or render
`
`obvious means for enabling updating field operation assignments
`for each of the at least one handheld device [claim 20.0] .................
`
`...... 103
`
`VII.
`
`CONCLUSION ............................................................................................................... 106
`
`vi
`Exhibit 2125 Page 6
`
`Exhibit 2125 Page 6
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`I.
`
`INTRODUCTION
`
`A.
`
`Request for Ex Parte Reexamination
`
`Requester respectfully requests reexamination under 35 U.S.C. §§ 301-307 and 37 CPR.
`
`§ 1.510 el seq. of claims 18-20 and 24 of US. Patent No. 8,494,581 (Ex. A., “the ’581 patent”),
`
`and issuance of a reexamination certificate cancelling these claims. As explained below, the prior
`
`art references identified and applied in this Request raise substantial new questions of
`
`patentability and render the above-noted claims unpatentable.
`
`Requester certifies that a complete copy of this Request for Reexamination has been
`
`served via First Class Mail on Intellectual Ventures, the record patent owner of the ’581 patent,
`
`at the following address: Schwabe, Williamson & Wyatt, P.C., PacWest Center, 1211 SW Fifth
`
`Avenue, Suite 1900, Portland, OR 97204.1 A copy of this Request was also served on the record
`
`patent owner of the ’581 patent at the following address: Schwabe, Williamson & Wyatt, PC,
`
`700 Washington St, Suite 701, Vancouver, WA 98660.2 A courtesy copy of this Request was
`
`also served on Patent Owner’s litigation counsel at the following address: Alan S. Kellman,
`
`Desmarais LLP, 230 Park Avenue, New York, NY 10169.
`
`Pursuant to 37 CPR. § 120(c)(1), Requester is submitting a fee of $12,000. To the
`
`extent that any additional fees are required to complete this Request, the Office is hereby
`
`authorized by the undersigned to charge Deposit Account No. 06-0916 for such fees.
`
`1 This address is listed as the address for the agent of record in the PAIR database.
`
`2 This address is listed as the correspondent address in the Assignment Database.
`
`1
`
`Exhibit 2125 Page 7
`
`Exhibit 2125 Page 7
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`B.
`
`Certification Regarding Statutory Estoppel Provisions
`
`Requester certifies that the statutory provisions of both Inter Partes Review (“IPR”) and
`
`Post Grant Review do not bar or prohibit FedEx from requesting ex parte reexamination of the
`
`’581 patent.
`
`C.
`
`The ’581 Patent Is in Litigation
`
`Pursuant to MPEP §2282, Requester is aware of the following litigation where the ’581
`
`patent has been asserted:
`
`Intellectual Ventures asserted the ’581 patent against Requester and other companies in a
`
`lawsuit captioned Intellectual Ventures 1] LLC v. FedEx Corp. et al, Case No. 2: 16-cv-980 (ED.
`
`Tex.). See E-l. On November 29, 2017, the Court issued a Markman Order in the case,
`
`construing each of the means-plus-function elements addressed in this Request. See E-2 at 83-
`
`108.3
`
`D.
`
`IPR Proceedings Against the ’581 Patent
`
`On January 19, 2017, Requester filed a petition for IPR of the ’581 patent, 1PR2017-
`
`00729, seeking review of claims 1-24. See D-1. On July 25, 2017, the Board instituted trial on
`
`claims 1-17 of the ’581 patent, and declined to institute trial on claims 18-24, determining that
`
`Petitioner failed to identify the structure for one of the means-plus-function elements of
`
`independent claim 18. See D-3. The Board, however, did not specifically consider the Rappaort
`
`reference as a whole, nor did it specifically determine that the reference itself failed to render the
`
`claims obvious. Rather, the Board was unpersuaded by the manner of presentation Petitioner set
`
`3 Agreed upon terms relevant to this Request were also noted in the Markman Order. See E-l at
`14.
`
`2
`
`Exhibit 2125 Page 8
`
`Exhibit 2125 Page 8
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`forth, stating that “Petitioner does not show sufficiently where Rappaport teaches the program
`
`prompting the user to input data.” D-3 at 20. In this Request, the same claim construction the
`
`Board adopted in its decisions denying institution of IPR has been applied, and the comment
`
`made by the Board in the denial of institution has been specifically addressed to demonstrate that
`
`the prior art raises substantial new questions of patentability. See Section IVB.
`
`On August 3 l, 2017, Requester filed a second petition for IPR on the ’581 patent,
`
`1PR2017-02030, challenging claims 18-20 and 24. See D-2. Intellectual Ventures filed a Patent
`
`Owner Preliminary Response in this proceeding on December 13, 2017, but the Board has not
`
`yet issued a decision on institution.
`
`E.
`
`Request for Expedited Reexamination
`
`Due to the ongoing nature of the above-identified lawsuit, Requester respectfully urges
`
`that, pursuant to 35 U.S.C. § 305, this Request be granted and reexamination conducted not only
`
`with “special dispatch,” but also with “priority over all other cases” in accordance with MPEP
`
`§2261.
`
`F.
`
`Reservation of Rights
`
`Requester reserves all rights and defenses available, including, without limitation,
`
`defenses as to invalidity, unenforceability, and noninfringement regarding the ’581 patent.
`
`Any interpretation or construction of the claims or particular terms, phrases, or clauses
`
`made in this Request, either implicitly or explicitly, are solely for the purpose of this proceeding
`
`and should not be viewed as constituting, in whole or in part, Requester’s own interpretation or
`
`construction. Moreover, because the ex parte reexamination procedure does not permit
`
`challenges under 35 U.S.C. § 112, Requester reserves the right to include indefiniteness
`
`arguments in other proceedings.
`
`3
`
`Exhibit 2125 Page 9
`
`Exhibit 2125 Page 9
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`11.
`
`SUMMARY OF THE ARGUMENT
`
`Claims 18-20 and 24 of the ’581 patent are directed generally to a system and method for
`
`managing mobile field assets. EX. A at 1:23-31. Patent Owner recognized during prosecution that
`
`the handheld device claimed is configured to “access an assessment program stored in a memory
`
`of a computing device located geographically remote from the handheld device.” EX. B at 65
`
`(underlining reflects amended claim language). According to the ’581 patent, field crew
`
`personnel can use a handheld device to access a geographically remote management system,
`
`which can “provide instructions (e.g., templates, task/punch lists) and/or programs to a group of
`
`users.” EX. A at 7:35-36. The programs are “centrally stored within one or more databases
`
`61/59” and are directly accessible to the handheld device over a network or indirectly accessible
`
`through a remote management system. EX. A at 7:38-41. The handheld devices are well-known
`
`“handheld or palm computer/PC, PDA, smart phone, [or] mobile telephony devices,” and enable
`
`remote access of industry/ profession-specific applications so “users [can] be more productive
`
`while operating in the field.” EX. A at 5:45-50.
`
`Two prior art references, cited herein, however, disclose systems and methods for
`
`managing mobile field assets, including accessing a program stored at a geographically remote
`
`location from the handheld device.
`
`For example, Rappaporl (PA-l) discloses systems and methods employing a portable
`
`handheld computer and one or more remote server computers for technicians in the field to
`
`complete the “design, deployment, test, optimization, and maintenance cycle required to
`
`implement successful communications networks.” PA-l at Abstract. Using a handheld computer,
`
`a wireless network technician in the field can model and optimize a wireless network signal
`
`within a building or over a distributed area. Id. at 1:12-18, 4:41-5:31, 18:64-l9z8. The technician
`
`4
`
`Exhibit 2125 Page 10
`
`Exhibit 2125 Page 10
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`can also take measurements using the handheld computer and transmit this data along with
`
`location data to a remote server computer. Id. at 4:54-53, 18:7-18, Fig. 9. Rappaporl, alone or in
`
`combination with other references, discloses or renders obvious each element of claims 18-20
`
`and 24.
`
`Similarly, Brockman (PA-3) discloses a system that includes a handheld unit (110), a
`
`wireless link (120), and remote resources (105, 115) for assisting both salespersons interacting
`
`with prospective buyers and sales managers. PA-3 at Fig. 1, 1:23-3:29, 4:23-42, 5:49-57, 5:58-
`
`63. Brockman discloses two different remote resources. A first remote resource includes a central
`
`computer unit providing access to “scripts” and other data to the handheld unit. Id at 4:23-5:32.
`
`A second remote resource includes an external data store such as a server at a vehicle
`
`manufacturer, credit bureau, or credit granting institution. Id at 4:35-42, 5:33-57, 6:33-41. Using
`
`the remote resources, Brockman’s system allows the handheld unit to assist salespersons and
`
`sales managers. A salesperson can send data to and receive data from the remote resources using
`
`the handheld unit and engage a prospective buyer while the handheld unit prompts the
`
`salesperson to collect data and interact with a buyer. Id at 6:42-7:22. Brockman in combination
`
`with other references, discloses or renders obvious each element of claims 18-20 and 24.
`
`In addition to the primary references identified above, other references disclose additional
`
`claimed features of the ’581 patent. For example, Bernard (PA-4) discloses a communication
`
`device for a personal digital assistant (PDA) that provides the PDA with access to multiple
`
`communication media. PA-4 at Abstract, 1:39-55. Bernard provides a device that is configured
`
`to secure to the PDA and provide expanded communications media capabilities. Id at Abstract.
`
`Bernard in combination with Brockman renders obvious claims 18, 19, and 24.
`
`5
`
`Exhibit 2125 Page 11
`
`Exhibit 2125 Page 11
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`Additionally, Khalessz’ (PA-2) discloses a system for “assigning work orders,
`
`communicating work orders to deployed field personnel, and communicating .
`
`.
`
`. up-to-date data
`
`related to an assigned work order.” PA-2 at 2:20-24. Khalessz' describes that the field crew is
`
`notified of the updated assignment “via [the] mobile field unit,” (id. at 92-5) as is claimed in
`
`claim 20. Accordingly, Khalessi when combined with Rappaporl or Brockmcm and Bernard
`
`renders claim 20 obvious.
`
`At least these references disclose or render obvious every feature of at least claims 18-20
`
`and 24 of the ’581 patent. Accordingly, Requester requests that the Office grant this request for
`
`ex parle reexamination, reexamine the challenged claims, and issue an initial Office Action
`
`rejecting the same.
`
`III.
`
`OVERVIEW OF THE ’581 PATENT AND ITS PROSECUTION HISTORY
`
`A.
`
`Specification
`
`The ’581 patent describes a system and method for managing mobile field assets. Ex. A
`
`at 1:23-31. The system includes an enterprise computing device (i.e., a remote server) and a
`
`handheld device employing a communication module and a position module. Ex. A. at 6:21-23,
`
`6:51-55, 7:54-67. The handheld device uses a network to enable “[r]eal time communications”
`
`with the computing device for “real-time access to remote programs, assistance and/or
`
`information related to [] field operations[,] and asset (personnel and inventory) resource
`
`management.” Ex. A at Abstract.
`
`6
`
`Exhibit 2125 Page 12
`
`Exhibit 2125 Page 12
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`
`
`
`
`FIG. {5
`
`As disclosed with regard to Figure 6 (above), field crew personnel can use handheld
`
`device 10/ 10’ to access remote management system 58, which can “provide instructions (e.g.,
`
`templates, task/punch lists) and/or programs to a group of users.” EX. A at 7:35-36. The
`
`programs are “centrally stored within one or more databases 61/59” and are directly accessible to
`
`the handheld device 10/ 10’ over the network 55 or indirectly accessible through the remote
`
`management system 58. EX. A at 7:38-41. The handheld devices are well-known “handheld or
`
`palm computer/PC, PDA, smart phone, [or] mobile telephony devices,” and enable remote access
`
`of industry/ profession-specific applications so “users [can] be more productive while operating
`
`in the field.” EX. A at 5:45-50.
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`The field crew can use the handheld device to gather data particular to an industry and
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`process it locally or transmit it to the remote computing device for further processing. Id. at 6:38-
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`7
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`Exhibit 2125 Page 13
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`Exhibit 2125 Page 13
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`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`41, 8: 13-3 1. The data includes both field data collected by the device or input by the user and
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`location data. Id at 7:55-8:12. The location data can be determined using global positioning
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`systems, which the ’581 patent admits was “known in the art” and “commercially available.” Id
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`at 6:51-67, 8:8-9. In one instance, the data is transmitted to the remote computing device to
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`“undergo computing operations beyond the resident capabilities of the handheld device,” where a
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`“limited software program can be used for gathering of data [and a] larger software application
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`and computing resources [of the remote computing device] may be necessary to render a
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`comprehensive analysis.” Id at 8:20-31. After the data is processed, the results are sent back to
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`the handheld device for use by the field crew. Id at 7:64-67.
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`B.
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`Issued Claims
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`The ’581 patent includes 24 claims, of which claims 1, 7, and 18 are independent. This
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`Request concerns only claims 18-20, and 24 of the ’581 patent, which are reproduced below:
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`18. An apparatus, comprising:
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`means for establishing a two-way communication channel between
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`a server and at least one handheld device located at a field
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`geographically distant from the server,
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`means for accessing a program stored at the server to enable an
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`assessment at the field using the at
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`least one handheld
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`device,
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`means for managing data collected at the field using the at least
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`one handheld device responsive to program,
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`means for determining a geographic location of the at least one
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`handheld device, and
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`means for enabling communicating the data collected at the field
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`and the geographic location of the at least one handheld
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`8
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`Exhibit 2125 Page 14
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`Exhibit 2125 Page 14
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`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`device between the at least one handheld device and the
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`other devices or the server.
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`19. The apparatus of claim 18, further comprising means for
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`tracking a location of the at least one handheld device.
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`20. The apparatus of claim 18, further comprising means for
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`enabling updating field operation assignments for each of the at
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`least one handheld device.
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`24. The apparatus of claim 18, further comprising:
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`means for providing data to the server for analysis, and
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`means for retrieving enhanced data from the server for use in
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`conducting the field assessment.
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`C.
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`Prosecution History
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`The ’581 patent was filed on August 25, 2009, as US. Patent Application No.
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`12/547,363. See EX. A. Its earliest claimed priority date is September 18, 2000. Id In responding
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`to the Office’s only prior art rejection (EX. B at 84-97), the Applicant amended claim 1 (then
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`claim 21) as follows to clarify that the handheld device accesses a remote assessment program:
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`“using a handheld device to access an assessment program stored in a memory of a computing
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`device located geographically remote from the handheld device.” Id at 65 (underlining reflects
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`amended language). The Applicant distinguished this step by arguing that accessing a remote
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`program is different than accessing a remote database: “[t]he distinction is between accessing an
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`assessment program and accessing a database storing data.” Id at 71-72. The Examiner rejected
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`issued claim 18 (then claim 40) for reasons similar to those of claim 1. Id at 84-97. The
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`Applicant amended claim 18, similar to claim 1, to recite a “means for establishing a two-way
`
`9
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`Exhibit 2125 Page 15
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`Exhibit 2125 Page 15
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`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`communication channel between a server and at least one handheld device located at a field
`
`geographically distant from the server.” Id at 68 (underlining reflects amended language). The
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`Applicant also amended claim 18 to recite a “means for determining a geographic location of the
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`at least one handheld device” and a “means for enabling communicating the data collected at the
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`field and the geographic location of the at least one handheld device between the at least one
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`handheld device and other devices or the server.” Id (underlining reflects amended language).
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`D.
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`Level of Ordinary Skill in the Art
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`Consistent with the level of ordinary skill identified in the ’581 Patent IPR Petitions, see
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`D-1, D-2, would have held at least a Bachelor’s Degree in Electrical Engineering, Computer
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`Engineering, Computer Science, or the equivalent, and two or more years of industry experience
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`in the field of mobile communications, or the academic equivalent thereof. D-4 at 1111 44-49
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`(citing Ex. A at 1:23 -3 1, 3:45-67, 2: 10-324). This person of ordinary skill in the art (a
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`“POSITA”) would have been familiar with the standard components, methods, and protocols
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`used at the time of the alleged invention to communicate between handheld devices and a server.
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`Id. Requester applies this level of ordinary skill in this Request.
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`E.
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`Claim Construction in Reexamination
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`In reexamination, claim terms of an unexpired patent are construed according to the
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`broadest reasonable interpretation in light of the specification. A claim in an unexpired patent
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`subject to ex parte reexamination receives “the broadest reasonable interpretation consistent with
`
`the specification and limitations in the specification are not read into the claims.” MPEP
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`2258(I)(G) (citing In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)), see also MPEP §
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`
`2111.01(I) (“Although claims of issued patents are interpreted in light of the specification,
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`prosecution history, prior art and other claims, this is not the mode of claim interpretation to be
`
`10
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`Exhibit 2125 Page 16
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`Exhibit 2125 Page 16
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`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0216-00000
`
`applied during examination. During examination, the claims must be interpreted as broadly as
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`their terms reasonably allow”) (emphasis in original (citing In re American Academy ofScience
`
`Tech Center, 367 F.3d 1359, 1369 (Fed. Cir. 2004)). “The broadest reasonable interpretation of
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`the claims must also be consistent with the interpretation that those skilled in the art would
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`reach.” MPEP § 21 l l. “The broadest reasonable interpretation of a claim term may be the same
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`as or broader than the construction of a term under the Phillips standard. But it cannot be
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`narrower.” Facebook, Inc. v. PragmatusAV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014).
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`As such, while the constructions adopted in this proceeding may differ from the
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`constructions in any district court or ITC litigation, including Intellectual Ventures II LLC v.
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`FedEx Corp. et al., Case No. 2:l6-cv-980 (E.D. Tex.), the adopted constructions must not be
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`narrower than those adopted by the district court applying the Phillips standard. See Facebook,
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`Inc., 582 F. App’x at 869. Accordingly, in the prior art analysis below, FedEx applies the
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`constructions adopted by the district court in Intellectual Ventures I