Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0218-00000
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Group Art Unit: To Be Assigned
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`Examiner: To Be Assigned
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`In re Ex Parte Reexamination of:
`
`U.S. Patent No. 6,909,356
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`Issued: June 21, 2005
`
`Named Inventors: Suzy Brown at al.
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`
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`Control Number: To Be Assigned
`
`Filed: November 2, 2001
`
`Title: METHODS AND APPARATUS FOR
`ASSOCIATING THE MOVEMENT OF
`GOODS WITH THE IDENTITY OF AN
`INDIVIDUAL MOVING THE GOODS
`
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`
`REQUEST FOR EX PARTE REEXAMINATION
`
`
`
`FedEx Corporation (“FedEx” or “Requester”) respectfully request ex parte reexamination
`
`of U.S. Patent No. 6,909,356 (“the ’356 patent,” Ex. A), assigned to Intellectual Ventures II,
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`LLC (“Intellectual Ventures” or “Patent Owner”). Prior art renders issued claims 1, 3-5, 7, 11-
`
`14, and 17, unpatentable under 35 U.S.C. § 103.
`
`As demonstrated below, this Request raises substantial new questions of patentability
`
`(“SNQs”) for the challenged claims. This Request presents one proposed rejection: U.S. Patent
`
`No. 5,963,134 to Bowers et al. (“Bowers”) in view of U.S. Patent No. 5,886,634 to Muhme
`
`(“Muhme”) renders claims 1, 3-5, 7, 11-14, and 17 obvious under 35 U.S.C. § 103(a).
`
`
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`
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`Exhibit 2126 Page 1
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`IV Exhibit 2126
`FedEx v. IV
`Case IPR2017-02030
`
`

`

`
`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0218-00000
`
`The combination of Bowers and Muhme disclose the subject matter that lead to the
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`allowance of claims 1, 3-5, 7, 11-14 and 17 of the ’356 patent. And although the Examiner had
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`Bowers before him during prosecution of the ’356 patent, he did not have Muhme in front him.
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`Thus, the Examiner did not consider the combination of Bowers and Muhme.
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`Requester has filed two inter partes review (IPR) petitions challenging the ’356 patent.
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`The first petition (D-1), however, applied a different prior art combination than this Request, and
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`the Board denied that combination after finding that Petitioner did not sufficiently demonstrate
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`how the prior art disclosed “wherein at least one of the objects is automatically returned or
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`picked up as a result of such notification,” as claim 1 recites. See D-2 at 14-18. This Request
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`uses different prior art than the first petition. Moreover, the combination of Bowers in Muhme in
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`this Request rectifies the deficiency identified by the Board in its institution decision on the first
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`petition. And while Requester also applies Bowers and Muhme in the second IPR petition (D-3),
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`the Board administratively denied the second IPR petition under 35 U.S.C. § 314(a) without
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`reaching the merits. D-5. Additionally, the second IPR petition did not expressly address the
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`district court’s construction of “automatically” (claim 1) because the district court’s claim
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`construction order (E-4) issued after the petition was filed. This Request expressly addresses the
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`district court’s construction. For these reasons, this Request presents SNQs with respect to the
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`IPR history of the ’356 patent.
`
`FedEx thus respectfully requests that the Office grant this request for ex parte
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`reexamination of the ’356 patent, reexamine claims 1, 3-5, 7, 11-14, and 17, and issue an initial
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`Office Action rejecting these claims over at least the prior art discussed in this Request.
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`
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`
`
`
`
`ii
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`Exhibit 2126 Page 2
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0218-00000
`
`
`
`
`Attachments
`
`1.
`2.
`
` Certificate of Service to Patent Owner.
` IDS and Form PTO/SB/08.
`
`
`Exhibits
`
`The ’356 Patent and Prosecution History
`
`Ex. A: U.S. Patent No. 6,909,356 to Suzy Brown et al. (“Brown” or “the ʼ356 patent”).
`Ex. B: Patent Prosecution History of U.S. Patent No. 6,909,356
`
`Prior Art
`
`
`PA-1: U.S. Patent No. 5,963,134 to John H. Bowers at al. (“Bowers”).
`PA-2: U.S. Patent No. 5,886,634 Muhme (“Muhme”).
`
`
`
`’356 Inter Partes Review Documents
`
`
`
`D-1: Petition for Inter Partes Review in IPR2017-00750, filed January 23, 2017.
`D-2:
`Institution Decision in IPR2017-00750, dated July 12, 2017.
`D-3: Petition for Inter Partes Review in IPR2017-02028, filed August 31, 2017.
`D-4: Declaration of Jason Hill, Ph.D., in Support of Petition for Inter Partes Review of
`U.S. Patent No. 6,909,356, dated August 30, 2017.
`Institution Decision in IPR2017-02028, Paper 9, entered February 21, 2018.
`
`D-5:
`
`
`Litigation Documents
`
`
`E-1: Complaint filed in Intellectual Ventures II LLC v. FedEx Corp. et al., Case No.
`2:16-cv-980 (E.D. Tex. E.D. Tex. Aug. 31, 2016).
`E-2: Markman Order in Intellectual Ventures II LLC v. FedEx Corp. et al., Case No.
`2:16-cv-980 (E.D. Tex. Aug. 31, 2016).
`E-3: Exhibit B to Plaintiff Intellectual Venture II LLC’s Infringement Contentions of
`January 17, 2017 in Intellectual Ventures II LLC v. FedEx Corp. et al., Case No.
`2:16-cv-980 (E.D. Tex. Aug. 31, 2016).
`E-4: Plaintiff Intellectual Venture II’s Opening Claim Construction Brief of August 16,
`2017 in Intellectual Ventures II LLC v. FedEx Corp. et al., Case No. 2:16-cv-980
`(E.D. Tex. Aug. 31, 2016).
`
`
`
`
`
`
`
`iii
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`Exhibit 2126 Page 3
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`

`

`
`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0218-00000
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Request for Ex Parte Reexamination ...................................................................... 1
`
`Certification Regarding Statutory Estoppel Provisions .......................................... 1
`
`Litigation Involving the ’356 Patent ....................................................................... 2
`
`IPR Proceedings Against the ’356 Patent ............................................................... 2
`
`Request for Expedited Reexamination.................................................................... 3
`
`Reservation of Rights .............................................................................................. 3
`
`II.
`
`SUMMARY OF THE ARGUMENT ................................................................................. 4
`
`III.
`
`OVERVIEW OF THE ’356 PATENT AND ITS PROSECUTION HISTORY ................ 6
`
`A.
`
`B.
`
`C.
`
`Specification ........................................................................................................... 6
`
`Issued Claims .......................................................................................................... 7
`
`Prosecution History ................................................................................................. 8
`
`IV.
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 9
`
`V.
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`CLAIM CONSTRUCTION ................................................................................................ 9
`
`A.
`
`“automatically returned or picked up” .................................................................. 10
`
`VI.
`
`IDENTIFICATION OF PRIOR ART AND EXISTENCE OF SUBSTANTIAL
`NEW QUESTIONS OF PATENTABILITY OF THE CLAIMS OF THE ’356
`PATENT ........................................................................................................................... 12
`
`A.
`
`B.
`
`Identification of the Prior Art ............................................................................... 12
`
`Summary of the Substantial New Questions of Patentability ............................... 12
`
`VII.
`
`PROPOSED REJECTIONS OF THE ’356 PATENT ...................................................... 16
`
`VIII. DETAILED EXPLANATION OF THE PROPOSED REJECTIONS OF THE
`CLAIMS OF THE ’356 PATENT .................................................................................... 16
`
`A.
`
`B.
`
`C.
`
`D.
`
`Overview of Bowers ............................................................................................. 16
`
`Overview of Muhme ............................................................................................. 19
`
`It Would Have Been Obvious to Combine Bowers and Muhme .......................... 22
`
`Bowers and Muhme Render Claims 1, 3-5, 7, 11-14, and 17 Obvious ................. 28
`
`1.
`
`Claim 1 ...................................................................................................... 28
`
`iv
`
`Exhibit 2126 Page 4
`
`

`

`
`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0218-00000
`
`“A method comprising: obtaining identity information regarding
`an identity which enters a controlled space” ............................................. 28
`
`“monitoring, using a wireless tracking system communicatively
`coupled to a computer system, locations and movements of the
`entity and objects within the controlled space” ........................................ 29
`
`“automatically associating, using the computer system, the identity
`information regarding the entity with status information regarding
`additions, removals, returns, defective status, or movements of the
`objects to/from/within the controlled space” ............................................ 31
`
`“transmitting the status information and the associated identity
`information to a server communicatively coupled to the computer
`system and configured to automatically notify a user of the status
`information” .............................................................................................. 34
`
`“wherein at least one of the objects is automatically returned or
`picked up as a result of such notification” ................................................ 38
`
`Claim 3: “The method of claim 1 further comprising notifying the
`user of the addition, removal, return, defective status, or movement
`of the objects” ........................................................................................... 41
`
`Claim 4: “The method of claim 3 further comprising notifying the
`user of whether or not the addition, removal, return, defective
`status, or movement of the objects is authorized or not.” ......................... 42
`
`Claim 5: “The method of claim 4 wherein authorization is
`determined according to the identity information.” .................................. 43
`
`Claim 7: “The method of claim 1 wherein the wireless tracking
`system includes barcode labels affixed to one or more of the
`objects.” .................................................................................................... 44
`
`Claim 11: “The method of claim 1 wherein the server is
`communicatively coupled to the computer system via one of a
`wireless communication link, or a network communication link” ........... 44
`
`Claim 12: “The method of claim 1 wherein the user accesses
`information regarding the addition, removal, return, defective
`status, or movements of objects to/from/within the controlled space
`associated with the identity information in the server through one
`or more client computers communicatively coupled to the server
`through a network.” .................................................................................. 45
`
`Claim 13: “The method of claim 12 wherein the network
`comprises the Internet.” ............................................................................ 46
`
`Claim 14: “The method of claim 1 wherein the notification is
`transmitted to the user via a wireless communication link, or a
`network communication link”................................................................... 47
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`v
`
`Exhibit 2126 Page 5
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`

`

`
`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0218-00000
`
`10.
`
`Claim 17: ““The method of claim 1 wherein the server
`automatically decrements or increments inventory levels or
`changes the status of objects in response to data transmitted to the
`server.” ...................................................................................................... 48
`
`IX.
`
`CONCLUSION ................................................................................................................. 49
`
`
`
`vi
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`Exhibit 2126 Page 6
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`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Request for Ex Parte Reexamination
`
`Requester respectfully requests reexamination under 35 U.S.C. §§ 301-307 and 37 C.F.R.
`
`§ 1.510 et seq. of claims 1, 3-5, 7, 11-14, and 17 of U.S. Patent No. 6,909,356 (Ex. A., “the ’356
`
`patent”), and issuance of a reexamination certificate cancelling these claims. As explained in
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`more detail 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
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`served via First Class Mail on Intellectual Ventures, the record patent owner of the ’356 patent,
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`at the following address: Amin, Turocy & Watson, LLP, 127 Public Square, 57th Floor, Key
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`Tower, Cleveland, OH, 44144. A courtesy copy of this Request was also served on Patent
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`Owner’s litigation counsel at the following address: Alan S. Kellman, Desmarais LLP, 230 Park
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`Avenue, New York, NY 10169.
`
`Pursuant to 37 C.F.R. § 1.20(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
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`authorized by the undersigned to charge Deposit Account No. 06-0916 for such fees.
`
`B.
`
`Certification Regarding Statutory Estoppel Provisions
`
`Requester certifies that the statutory provisions of both Inter Partes Review (“IPR”) and
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`Post Grant Review do not bar or prohibit FedEx from requesting ex parte reexamination of the
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`’356 patent. The challenged claims are at issue in IPR2017-02028, but that proceeding has not
`
`yet been instituted (and has also therefore not reached a final written decision). Thus, Requester
`
`is not barred or estopped from filing this Request under 35 U.S.C. § 325(d).
`
`
`
`1
`
`Exhibit 2126 Page 7
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`
`C.
`
`Litigation Involving the ’356 Patent
`
`Pursuant to MPEP § 2282, Requester is aware that Intellectual Ventures has asserted the
`
`’356 patent in a lawsuit captioned Intellectual Ventures II LLC, v. FedEx Corporation, FedEx
`
`Custom Critical, Inc., FedEx Freight Inc., FedEx Ground Package System, Inc., FedEx Office
`
`and Print Services, Inc., Federal Express Corporation, Genco Distribution System, Inc., Case
`
`No. 2-16-cv-00980 (EDTX). See E-1. On November 29, 2017, the Court issued a Markman
`
`Order in the case, construing several claim terms appearing in the claims addressed in this
`
`Request. See E-2 at 32-49.1
`
`D.
`
`IPR Proceedings Against the ’356 Patent
`
`On January 23, 2017, Requester filed a petition for IPR of the ʼ356 patent, IPR2017-
`
`00750, seeking review of claims 1, 3-5, 7, 10-14, 17, 33, 34, 51, and 53-55. See D-1. The
`
`January petition raised one challenge: U.S. Patent No. 7,844,505 to Arneson et al. (“Arneson”)
`
`renders claims 1, 3-5, 7, 10-14, 17, 33, 34, 51, and 53-55 obvious under 35 U.S.C. § 103(a). The
`
`Board declined to institute trial on July 12, 2017, determining, with respect to the claims
`
`addressed in this Request (i.e., claims 1, 3-5, 7, 11-14, and 17), that Petitioner did not sufficiently
`
`demonstrate how the prior art disclosed “wherein at least one of the objects is automatically
`
`returned or picked up as a result of such notification,” as claim 1 recites. See D-2 at 14-18. In the
`
`January petition, Petitioner presented a single reference disclosing, among other things, human
`
`actions taken as a fixed response to certain events. While fully consistent with Intellectual
`
`Ventures’ infringement allegations, the Board remained unconvinced that such “fixed actions”
`
`
`
` 1
`
` Agreed upon terms relevant to this Request were also noted in the Markman Order. See E-2 at
`13.
`
`
`
`2
`
`Exhibit 2126 Page 8
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`disclosed automatic action. Id. at 17. The proposed rejection in this Request addresses the
`
`Board’s reasons for denying institution of IPR of claims 1, 3-5, 7, 10-14, and 17, and
`
`demonstrates that the prior art raises substantial new questions of patentability. See Section IV.B.
`
`Although Requester disagreed with the Board’s reasoning for denying the January
`
`petition, Requester filed a second petition for IPR on the ’356 patent, IPR2017-02028, on August
`
`31, 2017. The second IPR petition challenges claims 1, 3-5, 7, 10-14, and 17, and addresses the
`
`Board’s reasons for denying the first IPR petition. See D-3. The second IPR petition raises one
`
`ground: U.S. Patent No. 5,963,134 to Bowers et al. (“Bowers”) in view of U.S. Patent No.
`
`5,886,634 to Muhme (“Muhme”) renders claims 1, 3-5, 7, 10-14, and 17 obvious under 35 U.S.C.
`
`§ 103(a). Intellectual Ventures filed a Patent Owner Preliminary Response in this proceeding on
`
`December 26, 2017, and the Board issued a decision on institution on February 21, 2018. D-5.
`
`The Board administratively denied the second IPR petition under 35 U.S.C. § 314(a) without
`
`reaching the merits because Requester filed the first IPR petition.
`
`As explained below, this Request raises SNQs for the challenged claims of the ’356
`
`patent with respect to the two IPR proceedings and the original prosecution of the ’356 patent.
`
`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 ’356 patent.
`
`
`
`3
`
`Exhibit 2126 Page 9
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`
`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.
`
`II.
`
`SUMMARY OF THE ARGUMENT
`
`
`
`The ’356 patent describes an inventory management system for monitoring “entities” and
`
`“objects” within a “controlled space” using wireless technology, such as radio frequency
`
`identification (RFID). Ex. A at Abstract, 4:7-22. In particular, the ’356 patent describes and
`
`claims methods for conducting inventory management that involve associating the addition,
`
`removal, or movement of tracked objects with the “person or robot” in possession of those
`
`objects, notifying a user of whether such events were authorized, and returning objects in
`
`response to the notification. Id. at 3:7-28, claims 1, 3-5, 7, 11-14, and 17. These inventory
`
`management techniques, however, were well-known when the patentee filed the application
`
`underlying the ’356 patent.
`
`
`
` Bowers and Muhme, for example, disclose every element of claims 1, 3-5, 11-14, and 17
`
`of the ’356 patent. For example, both references disclose associating the status of items with
`
`persons in a secured area before the earliest claimed priority date of the ’356 patent. PA-1 at
`
`8:12-26, 11:5-28, Fig. 1; PA-2 at 2:50-53, 3:12-4:12. Bowers discloses wirelessly obtaining
`
`article and patron identification information from RFID tags associated with each article and
`
`patron, respectively, in a library inventory and circulation control system. PA-1 at 8:12-26, 11:5-
`
`28, Fig. 1. Bowers also discloses that items kept within the library—such as items retrieved
`
`
`
`4
`
`Exhibit 2126 Page 10
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`following an unauthorized exit or attempt to exit the library—were automatically picked up and
`
`returned to their proper location according to automatically generated reshelving reports. Id. at
`
`5:30-46, 7:49-67, 12:3-39, 14:24-39, 17:24-39, 21:25-61, 22:1-3, 23:7-24:11.
`
`
`
`Muhme discloses a security system integrated with an inventory control system that
`
`similarly used RFID to monitor the location and status of items and persons before the earliest
`
`claimed priority date of the ’356 patent. PA-2 at 2:50-53, 3:12-4:12. When the security system of
`
`Muhme detected an unauthorized exit or attempt to exit by a person with moving items, Muhme
`
`further discloses transmitting status information and associated identity information to a server
`
`automatically configured to notify users of the event so they can “respond and investigate the
`
`unauthorized exit.” Id. at 3:37-43, 5:49-65.
`
`
`
`In addition to the combination of Bowers and Muhme disclosing all of the elements of
`
`claims 1, 3-5, 7, 11-14, and 17 of the ’356 patent, a POSITA would have been motivated to
`
`combine the references. The similarity in the systems of Bowers and Muhme, along with the
`
`purpose disclosed in Bowers to create a library inventory and circulation control system with
`
`robust security features while reducing the time and effort of library personnel in article handling
`
`would have motivated the POSITA to combine Bowers and Muhme and would have provided a
`
`reasonable expectation of success in making the combination.
`
`
`
`Because Bowers and Muhme renders claims 1, 3-5, 7, 11-14, and 17 of the ’356 patent
`
`obvious, Requester respectfully requests that the Office grant this request for ex parte
`
`reexamination, reexamine the challenged claims, and issue an initial Office Action rejecting the
`
`same.
`
`
`
`5
`
`Exhibit 2126 Page 11
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`III. OVERVIEW OF THE ’356 PATENT AND ITS PROSECUTION HISTORY
`
`A.
`
`Specification
`
`The ’356 patent describes an inventory management system for monitoring individuals
`
`and objects within a controlled space using wireless technology, such as radio frequency
`
`identification (RFID). Ex. A at Abstract, 4:7-22. The ’356 patent notes in its Background section
`
`that existing systems “provide some secure means of access such as a locked door or cabinet
`
`using physical keys and/or a method for tracking and viewing inventory,” but alleges that “none
`
`couple both of these methods . . . .” Id. at 1:49-53.
`
`As disclosed with regard to Figure 2 of the ’356 patent (below), the inventory
`
`management system tracks the location and movement of entities and objects within the
`
`controlled space. Ex. A at 5:38-62; see also id. at 3:7-28. In particular, a tracking system 220
`
`tracks an entity, described as “a person or robot,” upon entry into a controlled space, and
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`correlates the addition, removal, or movement of tracked objects with identity information of the
`
`entity. Id. at 3:7-28.
`
`
`
`6
`
`Exhibit 2126 Page 12
`
`

`

`
`
`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`
`Ex. A, Fig. 2 (Depicting a Remote Inventory Management System)
`
`Tracking system 220 reports this tracking information to a server 230, which stores the
`
`information in inventory records. Ex. A, at 5:37-6:44. Server 230 can also notify a user regarding
`
`an event in inventory (i.e., the removal or addition of an object in inventory associated with a
`
`particular entity identity). Id. at 6:45-55. The notification may also indicate whether or not the
`
`event was authorized. Id. at 3:30-35 and 5:56-62. Moreover, when objects are moved, the ’356
`
`patent describes automatically picking up or returning the objects to the controlled space. Id. at
`
`7:6-19.
`
`B.
`
`Issued Claims
`
`The ’356 patent includes claims 1-65, of which claims 1, 20, 33, 35, and 51 are
`
`independent. This Request challenges claims 1, 3-5, 7, 11-14, and 17 of the ’356 patent, which
`
`includes independent claim 1. The challenged claims are generally directed to well-known
`
`methods of inventory management. Independent claim 1 recites:
`
`
`
`7
`
`Exhibit 2126 Page 13
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`
`1. A method, comprising:
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`obtaining identity information regarding an entity which enters
`a controlled space;
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`monitoring, using a wireless tracking system communicatively
`coupled to a computer system, locations and movements of
`the entity and objects within the controlled space;
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`automatically associating, using the computer system, the
`identity
`information regarding
`the entity with status
`information
`regarding
`additions,
`removals,
`returns,
`defective
`status,
`or movements
`of
`the objects
`to/from/within the controlled space; and
`
`transmitting the status information and the associated identity
`information to a server communicatively coupled to the
`computer system and configured to automatically notify a
`user of the status information, wherein at least one of the
`objects is automatically returned or picked up as a result of
`such notification.
`
`C.
`
`Prosecution History
`
`
`
`The ’356 patent was filed on November 2, 2001, as U.S. Patent Application No.
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`10/053,540 (“the ’540 application”). Ex. A; Ex. B at 254. Its earliest claimed priority date is
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`November 3, 2000. Ex. A; Ex. B at 255. The ’540 application was filed with 43 claims, of which
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`claims 1, 22, and 38 were independent. Ex. B at 272-278. Of note, original, then pending claim
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`21 recited “[t]he method of claim 17, wherein an object is automatically returned or picked up as
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`a result of the notification.” Ex. B at 275. Original claim 21 depended from claim 17, which, in
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`turn, depended from claim 13. Claim 13 depended from original independent claim 1. Ex. B at
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`272-75. In the first Office Action on the merits, the Examiner indicated that claim 21 would be
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`allowable if rewritten “to include all of the limitations of the base claim and any intervening
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`claims.” Ex. B at 123. After unsuccessfully amending the base claim to recite features of another
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`previously pending claim and attempting to overcome the rejections to the base claim over the
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`prior art (Ex. B at 88-103, 66-74), Applicants eventually simply presented a new claim (claim
`
`
`
`8
`
`Exhibit 2126 Page 14
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`45) that incorporated the allowable subject matter of claim 21 and the intervening claims into
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`claim 1. Ex. B. at 29-43. These actions led to the allowance of the new claim, which corresponds
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`to as-issued claim 1. Ex. B at 21-24.
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`IV.
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`LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`Consistent with the level of ordinary skill identified in the ’356 Patent IPR Petitions, see
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`D-1, D-3, a person of ordinary skill in the art (“POSITA”) at the time of alleged invention of the
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`’356 patent would have held at least a Bachelor’s Degree in Electrical Engineering, Computer
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`Engineering, or the equivalent, and two or more years of industry experience in the field of
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`information management, or the academic equivalent thereof. D-4 at ¶¶ [033]-[034] (citing Ex. A
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`at 1:23-31, 3:45-67, 2:10-3:24). Such a POSITA would have been familiar with the standard
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`components, methods, and protocols used at the time of the alleged invention of the ’356 patent
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`to conduct inventory management using wireless tracking systems. Id. Requester applies this
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`level of ordinary skill in this Request.
`
`V.
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`CLAIM CONSTRUCTION2
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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
`
`
`
` 2
`
` While additional claim terms may warrant construction, any such terms do not affect the
`analysis in this Request. Additional terms may be construed in the related district court litigation.
`Because reexamination procedures do not permit challenges under 35 U.S.C. § 112, Requester
`has not included any such arguments. Requester may, however, raise such arguments in other
`proceedings.
`
`
`
`9
`
`Exhibit 2126 Page 15
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`2258(I)(G) (citing In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)); see also MPEP §
`
`2111.01(I) (“Although claims of issued patents are interpreted in light of the specification,
`
`prosecution history, prior art and other claims, this is not the mode of claim interpretation to be
`
`applied during examination. During examination, the claims must be interpreted as broadly as
`
`their terms reasonably allow.”) (emphasis in original (citing In re American Academy of Science
`
`Tech Center, 367 F.3d 1359, 1369 (Fed. Cir. 2004)). “The broadest reasonable interpretation of
`
`the claims must also be consistent with the interpretation that those skilled in the art would
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`reach.” MPEP § 2111. “The broadest reasonable interpretation of a claim term may be the same
`
`as or broader than the construction of a term under the Phillips standard. But it cannot be
`
`narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014).
`
`Requester submits that, for the purposes of this Request, no explicit construction is needed for
`
`any claim term not addressed below.
`
`A.
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`“automatically returned or picked up”
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`Independent claim 1 recites “wherein at least one of the objects is automatically returned
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`or picked up as a result of such notification.” For the purposes of this proceeding, Requester
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`submits that the Office should construe the term “automatically returned or picked up” in this
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`recitation as including returns or pickups with a decreased need for human input that are
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`performed by a user in response to a notification that an event occurred when applying the
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`broadest reasonable interpretation standard. This construction is the broadest reasonable
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`interpretation of this term for two reasons.
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`First, the district court construed the term “automatically” to mean “with a decreased
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`need for human input.” See E-2 at 42-44. And, according to the district court, the same
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`construction of “automatically” applies to all uses of this term in the claim. Id. at 42-43. As
`
`
`
`10
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`Exhibit 2126 Page 16
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0215-00000
`
`
`
`
`explained above, while the broadest reasonable interpretation may differ from the constructions
`
`in any district court or ITC litigation, including Intellectual Ventures II LLC v. FedEx Corp. et
`
`al., Case No. 2:16-cv-980 (E.D. Tex.), the broadest reasonable interpretation must not be
`
`narrower than a construction adopted by the district court applying the Phillips standard. See
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`Facebook, Inc., 582 F. App’x at 869.
`
`Second, in its allegations of infringement against FedEx, Intellectual Ventures contends
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`that this automatic return/pickup claim feature is met if a staff member “retrieves” a product
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`upon notification that the product “is at the wrong location” in order to deliver the product to
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`“the correct location.” E-3 at 19-20; see also E-4 at 7-8. Therefore, the broadest reasonable
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`interpretation of the phrase “automatically returned or picked up” should include returns or
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`pickups with a decreased need for human input that are performed by a user in response to a
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`notification that an event occurred.
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`Accordingly, in the prior art analysis below, and for the purposes of this Request only,
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`FedEx applies the construction adopted by the district court in Intellectual Ventures II LLC v.
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`FedEx Corp. et al., Case No. 2:16-cv-980 (E.D. Tex.) for “automa