`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`FedEx Corp.,
`Petitioner
`
`v.
`
`Intellectual Ventures II LLC,
`Patent Owner
`
`_____________________________
`
`U.S. Patent No. 8,494,581
`_____________________________
`
`Declaration of Tal Lavian, Ph.D.,
`in Support of Petition for Inter Partes Review of
`U.S. Patent No. 8,494,581
`
`
`
`
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`

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`
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`I.
`
`II.
`
`Table of Contents
`
`Introduction ...................................................................................................... 4
`
`Summary of My Opinions ............................................................................... 5
`
`III. Qualifications and Background ..................................................................... 13
`
`IV. Materials Considered ..................................................................................... 18
`
`V.
`
`Legal Standards ............................................................................................. 19
`
`A.
`
`B.
`
`Claim Construction..............................................................................20
`
`Obviousness Under 35 U.S.C. §103 ....................................................20
`
`VI. Overview of the ’581 Patent .......................................................................... 21
`
`VII. Person of Ordinary Skill in the Art ................................................................ 24
`
`VIII. Claim Construction ........................................................................................ 26
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Claim 18: “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” ..................37
`
`Claim 18: “means for accessing a program stored at the server
`to enable an assessment at the field using the at least one
`handheld device” .................................................................................37
`
`Claim 18: “means for managing data collected at the field using
`the at least one handheld device responsive to program” ...................38
`
`Claim 18: “means for determining a geographic location of the
`at least one handheld device” ..............................................................39
`
`Claim 18: “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” ..........................................................40
`
`Claim 19: “means for tracking a location of the at least one
`handheld device” .................................................................................41
`
`2
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`G.
`
`H.
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`Claim 20: “means for enabling updating field operation
`assignments for each of the at least one handheld device” .................42
`
`Claim 24: “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” ....................................................43
`
`IX. Brockman and Bernard Render Obvious Claims 18-20 and 24 Under
`35 U.S.C. § 103 .............................................................................................. 45
`
`A. Overview of Brockman .......................................................................45
`
`B.
`
`Overview of Bernard...........................................................................49
`
`C. Motivations and Rationale to Combine Brockman and Bernard ........50
`
`D.
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`Brockman and Bernard Render Obvious Each Element of
`Claims 18-20 and 24............................................................................55
`
`1.
`
`Claim 18 ....................................................................................55
`
`“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” ........................................................................55
`
`2.
`
`3.
`
`Claim 19 ....................................................................................98
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`Claim 24 ..................................................................................100
`
`X.
`
`Brockman and Bernard, in view of Khalessi Render Obvious Claim
`20 ................................................................................................................. 103
`
`A. Overview of Khalessi ........................................................................104
`
`B.
`
`Rationale and Motivation to Combine Brockman and Bernard
`with Khalessi .....................................................................................104
`
`1.
`
`Claim 20 ..................................................................................108
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`XI. Conclusion ................................................................................................... 109
`
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`3
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`I.
`
`INTRODUCTION
`
`1.
`
`I, Tal Lavian, submit this declaration to state my opinions on the
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`matters described below.
`
`2.
`
`I have been retained by Petitioner as an independent expert in this
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`proceeding before the United States Patent and Trademark Office.
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`3.
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`I understand that this proceeding involves U.S. Patent No. 8,494,581
`
`(“the ’581 patent”), and I have been asked to provide my opinions as to the
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`patentability of claims 18-20 and 24 of the ’581 patent. I understand that a copy of
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`the ’581 patent has been provided as Exhibit 1001.
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`4.
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`This declaration sets forth my opinions that I have formed in this
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`proceeding based on my study of the evidence, my understanding as an expert in
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`the field, and my education, training, research, knowledge, and personal and
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`professional experience.
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`5.
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`I have been asked to provide my opinion on whether claims 18-20 and
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`24 of the ’581 patent would have been obvious based on certain prior art
`
`references. Based on the combination of prior art references discussed in this
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`declaration, it is my opinion that one of ordinary skill in the art would have found
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`claims 18-20 and 24 of the ’581 patent to have been obvious as of its priority date.
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`II.
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`SUMMARY OF MY OPINIONS
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`6.
`
`The ’581 patent describes a handheld device, such as the one shown
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`below in FIG. 1, that allows personnel in the field to collect data about a situation
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`and transmit that data back to a remote management system which could be a
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`server or desktop PC. (Ex. 1001 at 1:23-31, 7:50-8:12, claims 1, 7, 18.) The
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`handheld device could be a PDA, smartphone, mobile telephony device (Ex. 1001
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`at 1:47.)
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`
`
`7.
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`The handheld device runs a “field management program.” The
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`program can be one of many services, some of which are mentioned as examples
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`with accompanying workflow detail. For instance, the ’581 patent discloses
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`exemplary field management programs in the following fields:
`
`a.
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`Construction (id. at Abstract, FIG. 7, 1:52-65, 4:18, 8:59-67,
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`9:1-49, claim 11);
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`b.
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`Heating Ventilating and Air Conditioning (HVAC) (id. at
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`Abstract, FIG. 8, 4:18, 9:42-67, claim 11);
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`c.
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`Project management (id. at Abstract, FIG. 9, 4:18, 10:45-67,
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`11:1-13, claim 11);
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`d.
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`Equipment readiness (id. at Abstract, FIG. 10, 4:19, 11:14-40,
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`claim 11);
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`e.
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`f.
`
`g.
`
`h.
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`Troubleshooting (id. at Abstract, 4:21, 11:30-40, claim 11);
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`Inventory management (id. at Abstract, FIG. 11:53-67, 12:1-7,
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`4:21, 11:41:52, claim 11);
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`Sales (id. at Abstract, 1:41, 3:39, 4:21, 9:5, 10:43-44); and
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`Legal investigation (id. at Abstract, FIG. 12, 4:23, claim 11)
`
`8.
`
`The above workflows are not mutually exclusive, nor are they
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`comprehensive. For example, the HVAC is a specialized case of “construction.” It
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`is stated that “it should be appreciated that estimates can also be provided in non-
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`construction sales using the present method.” (Id. at 10:42-44.) This is important
`
`because Brockman (see below) is essentially a set of sales workflows that preceded
`
`’581 patent while utilizing very similar methods to support a salespersons in the
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`field.
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`9.
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`A skilled artisan would have recognized that the features illustrated by
`
`these work flow examples are characteristic of interactive data collection and
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`decision support programs, which offer a front end on a handheld device, execute
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`some data processing locally, and exchange information and coordinate with a
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`remote server and/or operator.
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`10. The collected data includes field data collected by the device or input
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`by the user, as well as location data. (Id. at 7:55-8:12, claim 1.) The remote server
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`can process the received data and provide information and analysis back to the
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`mobile device in the field. (Id. at 8:4-8.)
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`11. The handheld device can download a “field management program”
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`that is executed locally (Id. at 6:19-21, claim 7.)
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`12.
`
`In my opinion, and as I show in my analysis in this declaration, the
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`system described and claimed in the ’581 patent was not new or was obvious as of
`
`the ’581 patent’s priority date.
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`13. For example, such a system was obvious in view of prior art
`
`references Brockman and Bernard. As shown in FIG. 1 below, Brockman discloses
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`that “[t]he seller computer unit 110 may be of a size suitable to held in a seller’s
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`hand, referred to simply as a ‘handheld’ unit, although it may be held in the seller’s
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`hand, used on a table or on the seller’s lap, suspended from a strap around the
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`seller’s neck, etc.” (Ex. 1002 at 4:27-31.) Brockman explains that the handheld
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`equipment “may be a custom designed unit or a suitably programmed subnotebook
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`computer or personal digital assistant (PDA).” (Id. at 5:50-57).
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`14. The “handheld” unit is utilized by salespersons in a sales environment
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`for collecting data and coordination functions with a central computer unit 105.
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`Data is exchanged between the central computer unit 105 and the handheld unit
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`110 during a sales interaction. The handheld units can also access external data
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`stores 115, which include remote computers operating at vehicle manufacturers,
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`credit bureaus, and/or credit granting institutions. (Ex. 1002 at 4:24-55.) Just like
`
`the ’581 patent, data can be shared and processed by the remote computers and
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`transmitted back to the handheld units of Brockman. (Id. at 6:6-11.)
`
`
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`15. While Brockman may not explicitly disclose the capability to
`
`determine a geographical location of the handheld device using GPS, user input, or
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`equivalent location device on the handheld unit, Bernard does.
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`16. Bernard discloses in Fig. 10 (below, annotations added) a
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`communication device that couples to a handheld device (e.g., a PDA) in order to
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`provide access to multiple communication media, including cellular wireless
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`communications networks and global positioning systems (GPS). (E.g., Ex. 1003 at
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`Fig. 1-2, 10, Abstract, 1:19-57, 3:59-4:15.) A serial interface is utilized to allow the
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`communication device of Bernard to couple to a handheld device and allow data to
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`be transmitted between the handheld device and remote resources via the
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`communication device. (E.g., id. at 4:59-5:8, 6:21-36, 10:30-48, 16:38-65.)
`
`
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`17. As I discuss in detail below, Brockman and Bernard disclose or render
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`obvious nearly every limitation of claims 18-20 and 24 of the ’581 patent, and the
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`limitations that they do not expressly disclose are rendered obvious by Brockman
`
`and Bernard in combination with other known prior art.
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`18.
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`In particular, the claims of the ’581 patent merely recite the basic
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`operations of a handheld device with remote access to a server together with other
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`known functionality. These functions include accessing a program stored at the
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`server (claim 18), tracking the handheld device (claim 19), updating field operation
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`assignments (claim 20), and providing data to a server for analysis (claim 24). (Ex.
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`1002 at 14:55-15:28.)
`
`19. As I explain below, each of the claimed elements of the ’581 patent
`
`existed and was well-known in the prior art, and the prior art described below
`
`discloses or renders obvious each and every limitation of claims 18-20 and 24.
`
`20. Because all of this common functionality was well known and
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`rendered obvious by the prior art, the claims of ’581 patent are nothing more than
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`combinations of familiar elements according to well-known methods. These
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`combinations, derived from a finite number of predictable solutions, are the
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`product of ordinary skill and common sense, not of any sort of innovation.
`
`21. Moreover, the primary reference, Brockman, shares a common
`
`purpose with the ’581 patent. That is, both Brockman and the ’581 patent disclose
`
`deploying handheld devices with remote access to information in the context of
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`sales. The handheld device of the ’581 patent allows personnel in the field to
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`receive assistance from remote resources while engaged in “field activities.” (E.g.,
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`Ex. 1001 at 1:35-2:9.) Examples of field activities described by the ’581 patent
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`include “customer interaction, sales, [and] data collection.” (Ex. 1001 at 1:35-2:9.)
`
`Using the handheld device, “less experienced personnel” are provided guidance
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`and access to information from remote resources. (Id.) Examples of situations
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`involving less experienced personnel described in the ’581 patent include
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`interacting with customers and engaging in sales activities. (Id.)
`
`22. The ’581 patent discloses that the data collected during these field
`
`activities can be utilized by more senior, experienced personnel to make business
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`decisions. (Ex. 1001 at 1:35-2:9.) The senior personnel, in turn, can act with
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`greater confidence knowing that the operator in the field operated consistently with
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`guidance provided to them during a field activity, notwithstanding any lack of
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`experience or direct supervision from a manager. (Id.)
`
`23. Brockman discloses the same system. In particular, Brockman
`
`describes performing the same type of activity using the same system of remote
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`assistance and data collection. Brockman explicitly describes challenges facing
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`businesses in the sales industry and the problem of inexperienced salesperson,
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`stemming from insufficient training, high turnover, and/or poor supervision. (Ex.
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`1002 at 1:23-2:29.) To address this challenge, and as illustrated in Figure 1 of
`
`Brockman (above), a salesperson uses a handheld unit while interacting with
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`customers. (Id. at 4:23-34, 5:50-57.)
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`24. By employing a handheld unit, salespersons and sales managers are
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`provided with several features. These include providing a salesperson with up-to-
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`date information about inventory and products from a remote resource, providing
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`prompts for a salesperson to effectively communicate with a customer, providing a
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`series of screen displays that enable for the collection of data from the customer,
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`and allowing sales managers to track a salesperson’s activities and make remote
`
`decisions during a buyer-seller negotiation. (E.g., id. at 4:35-5:44, 6:12-16, 6:33-
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`7:22, 8:22-42, 9:7-26, Figs. 3-21 (exemplary screen displays).)
`
`25. Brockman describes its system as addresses existing “information-
`
`flow problems” in the sales industry and allowing for more effective use of capital
`
`in a sales-oriented business. (Id. at 1:38-60.) The exemplary business disclosed in
`
`Brockman is vehicle sales. (Id. at 1:38-3:29.) However, one skilled in the art would
`
`understand from Brockman that its disclosure is not limited to vehicle sales
`
`because Brockman also states that this but one “illustrative embodiment” that
`
`doesn’t limit the implementation of its system in other fields. (Ex. 1002 at 4:4-23.)
`
`Moreover, Brockman explicitly discloses using its system in a field other than
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`vehicle sales. (See 14:64-15:5 (describing use of the system in “jewelry store”
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`sales).) Based on Brockman’s proclamation and the additional example of jewelry
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`store sales, one skilled in the art would understand that Brockman’s system is
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`applicable in more than one field. Thus, Brockman can be deployed at least in
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`other sales contexts, such as those contemplated by the disclosure of the ’581
`
`patent.
`
`III. QUALIFICATIONS AND BACKGROUND
`I possess the knowledge, skills, experience, training and the education
`26.
`
`to form an expert opinion and provide testimony in this case. A detailed record of
`
`my professional qualifications, including a list of patents and academic and
`
`professional publications, is set forth in my curriculum vitae attached to this
`
`declaration as Appendix A.
`
`27.
`
`I expect to further testify, if asked, regarding the subject matter set
`
`forth in this declaration.
`
`28.
`
`I have more than 25 years of experience in the networking,
`
`telecommunications, Internet, and software fields. In 1987, I obtained a Bachelor
`
`of Science (“B.Sc.”) in Mathematics and Computer Science from Tel Aviv
`
`University, Israel. In 1996, I obtained a Master’s of Science (“M.Sc.”) degree in
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`Electrical Engineering, also from Tel Aviv University. I received a Ph.D. in
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`Computer Science from the University of California at Berkeley in 2006.
`
`29.
`
`I am currently employed by the University of California at Berkeley
`
`and was appointed as a lecturer and Industry Fellow in the Sutardja Center of
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`Entrepreneurship and Technology (“SCET”) as part of UC Berkeley College of
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`Engineering. I have been with the University of California at Berkeley since 2000
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`
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`where I served as Berkeley Industry Fellow, Lecturer, Visiting Scientist, Ph.D.
`
`Candidate, and Nortel’s Scientist Liaison, where some positions and projects were
`
`done concurrently, others sequentially.
`
`30.
`
`I have more than 25 years of experience as a scientist, educator and
`
`technologist, and much of my experience relates to computer networking
`
`technologies. For eleven years from 1996 to 2007, I worked for Bay Networks and
`
`Nortel Networks. Bay Networks was in the business of making and selling
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`computer network hardware and software. Nortel Networks acquired Bay
`
`Networks in 1998, and I continued to work at Nortel after the acquisition.
`
`Throughout my tenure at Bay and Nortel, I held positions including Principal
`
`Scientist, Principal Architect, Principal Engineer, Senior Software Engineer, and
`
`led the development and research involving a number of networking technologies.
`
`I led the efforts of Java technologies at Bay Networks and Nortel Networks. In
`
`addition, during 1999-2001, I served as the President of the Silicon Valley Java
`
`User Group with over 800 active members from many companies in the Silicon
`
`Valley.
`
`31. Prior to that, from 1994 to 1995, I worked as a software engineer and
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`team leader for Aptel Communications, designing and developing mobile wireless
`
`devices and network software products. I developed a Personal Communication
`
`System (PCS) including a two-ways mobile wireless messaging architecture. Part
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`
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`of the solution was the development of a Personal Digital Assistant (PDA) on the
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`mobile side, and a central data handling service at the server side. The two-way
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`messaging system had similar characteristics to today’s short message service
`
`(SMS) on smartphones.
`
`32. As part of our testing tools, I developed a geographic communication
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`system that collected and transmitted the geographic physical location, and the wir
`
`eless signal received to determine the quality of the signal received in different urb
`
`an and metropolitan areas. The system was based on wireless mobile transmitters/r
`
`eceivers and Global Positioning System (GPS)
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`receivers installed on vehicles. The information was transmitted to multiple urban
`
`base stations that received the location and the quality of the wireless signal transm
`
`ission.
`
`33.
`
`I also worked on development of two-way wireless OFDM
`
`technology, in the 915 MHz band, under the FCC part 15. The technology was a
`
`continuation of military research for low power, wideband OFDM to reduce
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`wireless transmission detectability.
`
`34. From 1990 to 1993, I worked as a software engineer and team leader
`
`at Scitex Ltd., where I developed system and network communications tools
`
`(mostly in C and C++).
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`35.
`
`I have extensive experience in the area of network communications
`
`and Internet technologies including design and implementation of computer-based
`
`systems for managing communications networks. While with Nortel Networks and
`
`Bay Networks (mentioned above) my work involved the research and development
`
`of these technologies. For example, I wrote software for Bay Networks and Nortel
`
`Networks Web based network management for Bay Networks switches. I
`
`developed Simple Network Management Protocol (SNMP) software for Bay
`
`Network switches and software interfaces for Bay Networks’ Optivity Network
`
`Management System. I wrote software for Java based device management
`
`including software interface to the device management and network management
`
`for the Accelar routing switch family network management system.
`
`36.
`
`I am named as a co-inventor on more than 100 patents and I
`
`coauthored more than 25 scientific publications, journal articles, and peer-reviewed
`
`papers. Furthermore, I am a Senior Member of the Institute of Electrical and
`
`Electronics Engineers (“IEEE”).
`
`37.
`
`I currently serve as a Principal Scientist at my company Telecomm
`
`Net Consulting Inc., where I develop network communication technologies and
`
`provide research and consulting in advanced technologies, mainly in computer
`
`networking and Internet technologies. In addition, I serve as a Co-Founder and
`
`Chief Technology Officer (CTO) of VisuMenu, Inc., where I design and develop
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`
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`architecture of visual IVR technologies for smartphones and wireless mobile
`
`devices in the area of network communications. The system is based on cloud
`
`networking and cloud computing utilizing Amazon Web Services.
`
`38. Additional details of my background are set forth in my curriculum
`
`vitae, attached as Appendix A to this Declaration, which provides a more complete
`
`description of my educational background and work experience.
`
`39.
`
`I am being compensated for my time at the rate of $400 per hour for
`
`my work. This compensation is in no way contingent upon the nature of my
`
`findings, the presentation of my findings in testimony, or the outcome of this
`
`proceeding.
`
`40. The analysis below presents the technical subject matter described in
`
`the ’581 patent, as well as some background known in the art at the priority date of
`
`the ’581 patent. It also presents my opinions regarding the scope and patentability
`
`of the ’581 patent based on certain references that I considered.
`
`
`
`
`
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`
`
`IV. MATERIALS CONSIDERED
`41. The analysis that I provide in this Declaration is based on my
`
`education and experience in the telecommunications and information technology
`
`industries, as well as the documents I have considered, including the ’581 patent,
`
`which states on its face that it issued from an application filed on August 25, 2009,
`
`in turn claiming priority back to an earliest application filed on September 18,
`
`2000. For purposes of this Declaration, I have assumed September 18, 2000 as the
`
`effective filing date for the ’581 patent. I have reviewed, considered, and cited to
`
`the following documents in my analysis below:
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1006
`
`1007
`
`1008
`
`1009
`
`Title of Document
`U.S. Patent No. 8,494,581 to Frank A. Barbosa et al.
`U.S. Patent No. 6,125,356 to Brockman (“Brockman”)
`U.S. Patent No. 5,497,339 to Bernard (“Bernard”)
`U.S. Patent No. 6,633,900 to Khalessi et al. (“Khalessi”)
`Complaint for Patent Infringement, Intellectual Ventures II LLC v.
`FedEx Corp., 2:16-cv-00980 (E.D. Tex., Aug. 31, 2016), ECF No.
`1.
`Exhibit D to Plaintiff Intellectual Venture II LLC’s Infringement
`Contentions, Intellectual Ventures II LLC v. FedEx Corp., 2:16-cv-
`00980 (E.D. Tex., Jan. 17, 2017).
`Exhibit A to Joint Claim Construction and Prehearing Statement,
`Intellectual Ventures II LLC v. FedEx Corp. et al., No. 2:16-cv-980
`(E.D. Tex., June 30, 2017) (ECF No. 82).
`Plaintiff Intellectual Ventures’ Opening Claim Construction Brief,
`Intellectual Ventures II LLC v. FedEx Corp., 2:16-cv-00980 (E.D.
`Tex., Aug. 16, 2017), ECF No. 91.
`
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`
`
`
`Exhibit No.
`1011
`
`1012
`
`Title of Document
`Institution Decision, FedEx Corporation v. Intellectual Ventures II,
`LLC, IPR2017-00729 (P.T.A.B., July 25, 2017).
`Petition for Inter Partes Review, FedEx Corporation v. Intellectual
`Ventures II, LLC, IPR2017-00729 (P.T.A.B., January 19, 2017).
`
`
`
`V. LEGAL STANDARDS
`In forming my opinions and considering the subject matter of the ’581
`42.
`
`patent and its claims in light of the prior art, I am relying on certain legal principles
`
`that counsel in this case explained to me. My understanding of these concepts is
`
`summarized below.
`
`43.
`
`I understand that the claims define the invention. I also understand
`
`that an unpatentability analysis is a two-step process. First, the claims of the patent
`
`are construed to determine their meaning and scope. Second, after the claims are
`
`construed, the content of the prior art is compared to the construed claims.
`
`44.
`
`I understand that a claimed invention is only patentable when it is
`
`new, useful, and non-obvious in light of the prior art. That is, the invention, as
`
`defined by the claims of the patent, must not be anticipated by or rendered obvious
`
`by the prior art.
`
`45. For purposes of this declaration, I have been asked to opine only on
`
`certain issues regarding the technology at issue, the level of ordinary skill in the
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`art, the scope of the ’581 patent claims, and obviousness. I have been informed of
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`the following legal standards, which I have applied in forming my opinions.
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`A. Claim Construction
`I understand that the United States Patent and Trademark Office
`46.
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`interprets claim terms of an unexpired patent based on the broadest reasonable
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`interpretation in light of the patent’s specification. Thus, I have been informed that
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`for each claim term construed in this proceeding, I should use the “broadest
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`reasonable interpretation” that would have been understood by one of ordinary
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`skill in the art when reading the specification and prosecution history of the ’581
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`patent at the time of the alleged invention of the ’581 patent.
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`47.
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`I understand that the use of the word “means” in a claim triggers a
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`rebuttable presumption that it is written in a “means-plus-function” format. I also
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`understand that the scope of means-plus-function claim terms are limited to the
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`corresponding structure, material, or acts described in the specification, and their
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`equivalents, that perform the claimed function. Further, I understand that when a
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`means-plus-function term refers to software, the corresponding structure may be in
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`the form of an algorithm, such as a flow chart.
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`B. Obviousness Under 35 U.S.C. §103
`I have been advised that a patent claim may be unpatentable as
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`obvious under 35 U.S.C. § 103 if the differences between the subject matter
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`patented and the prior art are such that the subject matter as a whole would have
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`been obvious to a person of ordinary skill in the art at the time the invention was
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`made. I have also been advised that several factual inquiries underlie a
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`determination of obviousness. These inquiries include (1) the scope and content of
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`the prior art; (2) the level of ordinary skill in the field of the invention; (3) the
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`differences between the claimed invention and the prior art; and (4) any objective
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`evidence of non-obviousness.
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`49.
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`I also have been advised that combining familiar elements according
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`to known methods and in a predictable way is likely to suggest obviousness when
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`such a combination would yield predictable results.
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`VI. OVERVIEW OF THE ’581 PATENT
`50. The ’581 patent describes a system and method for managing field
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`operators (e.g., “mobile assets”) using handheld devices. (Ex. 1001 at Abstract.)
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`The system disclosed in the ’581 patent includes an enterprise computing device
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`(i.e., a remote server) and a handheld device with a communication module and a
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`position module. (Id. at 6:21-23, 6:51-55.) The handheld device may communicate
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`in “[r]eal time” with the computing device over a data network for “real-time
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`access to remote programs, assistance and/or information related to [] field
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`operations[,] and asset (personnel and inventory) resource management.” (Id. at
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`Abstract.)
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`51. The ’581 patent describes its system for managing personnel engaged
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`in field activities. (Ex. 1001 at cover, 1:23-67.) In certain embodiments, the
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`personnel participate in sales and interact with customers across different
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`industries (Id. at 3:33-41 (describing field operators as estimators, investigators, or
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`“salesmen”).)
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`52. The user of the handheld device is connected via a wireless base
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`station and/or a communications satellite to a communication network that
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`connects to the user to his or her enterprise. The environment is depicted below in
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`FIG. 6. The ’581 patent itself states that the communication and GPS technologies,
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`as well its handheld devices, were well known at the time of the invention.
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`53. As disclosed with respect to Figure 6 (below), the ’581 system assists
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`these field operators by providing access to programs, instructions, and/or data
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`stored on a server, which are accessible via a handheld device acting as a client
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`over a network. (Ex. 1001 at cover, 6:1-50, 7:1-67, Fig. 6.) Exemplary instructions
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`disclosed in the ’581 patent include “templates,” “tasks,” or “punch lists.” (Id. at
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`7:31-48.) By storing these on the server, the ’581 patent explains that the templates
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`can be maintained with up-to-date information to provide accurate information to
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`field operators. (Id.)
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`54. The handheld device of the ’581 patent also stores and executes
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`industry-specific programs (e.g., “field data management” programs) that can be
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`used to collect data, prompt the operator, and interact with the remotely-stored
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`programs and templates. (Id. at 6:1-50, 7:1-67.) With respect to hardware, the ’581
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`patent describes its handheld devices as well-known “handheld or palm
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`computer/PC, PDA, smart phone, [or] mobile telephony devices,” allowing
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`personnel to collect data and conduct “field assessments.” (Id. at 5:45-50, 3:37-41.)
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`Exemplary field assessments include “customer interaction, sales, cost estimates,
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`and third-party status/feedback collection.” (Id. at 13:11-24.)
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`55. Using the handheld device, personnel can gather data particular to an
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`industry and process it locally or transmit it to the server. (Id. at 6:38-41, 8:13-31.)
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`In one embodiment, a field operator collects data in response to a program on the
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`server and the handheld device provides a prompt to the operator. (Id. at 7:50-
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`8:12.) The data, if processed remotely, is communicated to the server and sent back
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`to the handheld device for use by the field personnel. (Id. at 8:20-31, 7:64-67.) The
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`collected data can be communicated with location data. (E.g., id. at 6:51-67, 8:4-
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`12.)
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`56.
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`Independent claim 18 captures this concept by reciting an apparatus
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`with means for establishing a two-way communication channel with a server,
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`means for accessing a program stored on the server, means for managing data
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`collect at the field responsive to a program, means for determining a geographic
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`location of a handheld device, and means for transferring data and geographic
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`location information to the server. (Id. at 14:55-15:2.) As discussed below, these
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`elements were well known, and dependent claims 19, 20, and 24 add little more
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`than common functions, including location tracking, updating field assignments,
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`and providing data to a server for analysis. (Id. at 15:3-28.)
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`VII. PERSON OF ORDINARY SKILL IN THE ART
`I am informed that patentability must be analyzed from the
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`perspective of “one of ordinary skill in the art” in the same field as the patents-in-
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`suit at the time of the invention. I am also informed that several factors are
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`considered in assessing the level of ordinary skill in the art, including (1) the types
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`of problems encountered