Paper No. 7
`Trials@uspto.gov
`Entered: July 25, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner.
`____________
`
`Case IPR2017-00729
`Patent 8,494,581 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: July 25, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner.
`____________
`
`Case IPR2017-00729
`Patent 8,494,581 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00729
`Patent 8,494,581 B2
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`I. INTRODUCTION
`
`A. Background
`FedEx Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–24 of U.S. Patent No. 8,494,581
`B2 (Ex. 1001, “the ’581 patent”). Petitioner indicates that FedEx Corp.,
`FedEx Corporate Services, Inc., Federal Express Corporation, FedEx
`Ground Package System, Inc., FedEx Freight, Inc., FedEx Custom Critical,
`Inc., FedEx Office and Print Services, Inc., and GENCO Distribution
`System, Inc., are real parties in interest. Pet. 71. Intellectual Ventures II
`LLC (“Patent Owner”), filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). Upon consideration of the Petition and Preliminary Response, we
`conclude, under 35 U.S.C. § 314(a), that Petitioner has established a
`reasonable likelihood that it would prevail with respect to claims 1–17, but
`not as to claims 18–24. Accordingly, we institute an inter partes review of
`claims 1–17 of the ’581 patent.
`
`B. Related Matters
`The parties indicate that the ’581 patent has been asserted in
`Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-cv-980 (E.D. Tex.).
`Pet. 72; Paper 5, 1.
`
`
`C. Evidence Relied Upon
`Petitioner relies on the following prior art:
`Ex. 1002 (“Rappaport”) US 6,971,063 B1 Nov. 29, 2005
`Ex. 1003 (“DeLorme”) US 6,321,158 B1 Nov. 20, 2001
`Ex. 1004 (“Wright”)
`US 5,857,201
`Jan. 5, 1999
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`Ex. 1005 (“Khalessi”) US 6,633,900 B1 Oct. 14, 2003
`
`
`
`
`
`Petitioner also relies on the Declaration of Tal Lavian, Ph.D.
`(Ex. 1006, “Lavian Decl.”).
`Patent Owner relies on the Declaration of Jacob Sharony, Ph.D.
`(Ex. 2001, “Sharony Decl.”).
`
`
`Reference(s)
`
`Basis
`
`D. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`Claim(s)
`Challenged
`1–15, 18, 19,
`21, 23, and 24
`
`Rappaport
`
`§ 103(a)
`
`Rappaport and DeLorme
`
`§ 103(a)
`
`16
`
`Rappaport and Wright
`
`§ 103(a)
`
`17 and 22
`
`Rappaport and Khalessi
`
`§ 103(a)
`
`20
`
`
`E. The ’581 Patent
`The ’581 patent describes a system and method for managing field
`assets via a wireless handheld device. Ex. 1001, [54], [57]. Figure 6,
`reproduced below, illustrates an example:
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`Figure 6 is an environment for communications between handheld devices
`10, 10′ and remote management system 58. Id. at 7:31–34. Remote
`management system 58 comprises a server that accesses job templates and
`programs stored on database 59. Id. at 38–41, 60–61. Device 10 is a
`handheld management device, such as a personal digital assistant (PDA),
`two-way pager, or a World Wide Web (Web)/Wireless Application Protocol
`(WAP)-enabled mobile phone. Id. at 5:51–58.
`According to the ’581 patent, a user operating in the field uses
`handheld device 10 for the assessment of a field problem by executing an
`industry-specific program, also referred to as a field data management
`program. Id. at 7:50–53. The field data management program prompts the
`user for input of data related to the problem and, during execution, provides
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`the user access to remote resources via wireless communication system 51
`and networks 55. Id. at 7:55–60.
`Claim 1, reproduced below, is illustrative of the invention:
`1.
`A method, comprising:
`using a handheld device to access an assessment program
`stored in a memory of a computing device located
`geographically remote from the handheld device,
`the assessment program being configured to enable
`a field assessment in a specific industry;
`collecting field data associated with the field assessment
`using the handheld device in response to the
`assessment program;
`using the handheld device to determine a geographical
`location of the handheld device; and
`communicating the field data collected using the handheld
`device and the geographical location of the
`handheld device to the computing device.
`Ex. 1001, 13:37–50.
`
`A.
`
`II. ANALYSIS
`Claim Construction
`1. Principles of Law
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–45 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
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`Limitations with the language “means” or “means for” are presumed
`to invoke 35 U.S.C. § 112 ¶ 6.1 See Williamson v. Citrix Online, LLC, 792
`F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“use of the
`word ‘means’ creates a presumption that § 112, ¶ 6 applies”); see also In re
`Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six
`applies regardless of the context in which the interpretation of means-plus-
`function language arises, i.e., whether as part of a patentability
`determination in the PTO or as part of a validity or infringement
`determination in a court.”). The sixth paragraph of 35 U.S.C. § 112 provides
`that “[a]n element in a claim for a combination may be expressed as a means
`or step for performing a specified function without the recital of structure,
`material, or acts in support thereof, and such claim shall be construed to
`cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” Where a challenged claim contains a
`means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph, the
`Petitioner “must identify the specific portions of the specification that
`describe the structure, material, or acts corresponding to each claimed
`function.” 37 C.F.R. § 42.104(b)(3).
`
`
`
`1 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6, as
`35 U.S.C. § 112(f). Because the ’581 patent has a filing date before
`September 16, 2012, the effective date of § 4(c) of the AIA, we will refer to
`the pre-AIA version of 35 U.S.C. § 112.
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`2. Means-plus-function limitations (Claim 18)
`We turn to Petitioner’s identification of the recited function and the
`specific portions of the specification that describe the structure, material, or
`acts corresponding to each claimed function under 37 C.F.R. § 42.104(b)(3)
`for the means-plus-function limitations recited in claims 18–24. Pet. 8–13.
`Patent Owner does not dispute Petitioner’s contentions in this regard, but
`instead disputes that Rappaport teaches the function of “managing data
`collected at the field using the at least one handheld device responsive to
`program” recited in claim 18. Prelim. Resp. 20.
`Based on the record before us, for the reasons set forth below, we are
`not persuaded by Petitioner’s contentions even using Petitioner’s
`identification of structure corresponding to the “means for managing data
`collected at the field using the at least one handheld device responsive to
`program” limitation recited in independent claim 18. See infra § II.B.2.d.
`Accordingly, because this determination resolves the disputes between the
`parties regarding claims 18–24, we need not consider further the parties’
`other contentions regarding the means-plus-function limitations.
`
`B. Asserted Grounds of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
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`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.2 See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`
`1. Level of Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have held at least a Bachelor’s Degree in Electrical Engineering, Computer
`Engineering, Computer Science, or an equivalent, and two or more years of
`industry experience in the field of mobile communications, or the academic
`equivalent thereof.” Pet. 8. Petitioner bases its argument on the testimony
`and experience of Dr. Lavian. Id. (citing Ex. 1005 ¶¶ 44–49). Patent Owner
`does not challenge Petitioner’s statement at this stage of the proceeding. See
`generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s
`statement of the level of skill in the art.
`
`
`2. Alleged Obviousness over Rappaport
`Petitioner contends that claims 1–15, 18, 19, 21, 23, and 24 would
`have been obvious over Rappaport. Pet. 15–57. For the reasons given
`below, Petitioner has demonstrated a reasonable likelihood that it would
`prevail with respect to its challenge of claims 1–15, but has not
`demonstrated a reasonable likelihood it would prevail with respect to its
`challenge of claims 18, 19, 21, 23, and 24.
`
`
`2 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
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`a. Overview of Rappaport
`Rappaport describes a system of portable handheld computers and
`servers for designing, deploying, testing, and optimizing communications
`networks. Ex. 1002, [57]. Figure 9, reproduced below, illustrates an
`example:
`
`
`
`Figure 9 is a schematic diagram illustrating communication links between
`portable handheld computer 102 and server computer 100. Id. at 5:63–65.
`Portable handheld computer 102 is a Palm IIIC PDA running the
`PalmOS operating system. Id. at 6:27–37. Server 100 runs the
`SitePlanner® software product, which has computer aided design (CAD)
`facilities that provide layouts of buildings, terrain, and other objects. Id. at
`6:45–53. A field engineer may communicate design changes using portable
`handheld computer 102 back to server 100. Id. at 14:23–26, 32–35.
`Interface boxes 104 and 106 transmit this information, and other data,
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`between portable handheld computer 102 and server 100. Id. at 14:64–66.
`The transmission may be over wired or wireless network medium. Id. at
`14:20–22.
`
`
`b. Claims 1 and 7
`Regarding the method recited in independent claim 1, and the
`corresponding system recited in claim 7, Petitioner points to Rappaport’s
`teachings relating to the Palm handheld device communicating with the
`remote server or personal computer (PC) that operates the SitePlanner®
`software product. Pet. 13–31, 37–41. For instance, Petitioner argues that
`Rappaport’s SitePlanner® software product teaches the “assessment
`program” recited in claim 1 (id. at 17) and “the local SitePlanner® module
`installed on the handheld computer” teaches “a field management program”
`recited in claim 7 (id. at 37). Petitioner acknowledges reliance on “several
`embodiments” of Rappaport, but contends “[i]t would have been obvious to
`combine features from these embodiments with one another because they are
`all aspects of the same handheld computer-to-server communication
`system.” Id. at 15 (citing Ex. 1006 ¶¶ 76–85).
`Patent Owner disputes that Petitioner has shown (1) that Rappaport
`teaches “collecting field data . . . using the handheld device in response to
`the assessment program” and “a computing device located geographically
`remote from the handheld device” recited in claim 1 (Prelim. Resp. 1, 8–16);
`and (2) that Rappaport teaches “a communication module configured to
`download a field management program stored in a computing device located
`remotely from the handheld device,” recited in claim 7 (id. at 17–20). Patent
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`Owner further disputes that Petitioner has provided sufficient reasons to
`combine the teachings of Rappaport (id. at 22–25).
`We turn to Patent Owner’s first dispute, i.e., that Petitioner has not
`shown sufficiently two limitations recited in claim 1. Patent Owner, more
`specifically, contends with respect to both limitations “Rappaport does not
`instruct the field operator from the geographically remote computing device
`to collect field data.” Prelim. Resp. 7–8. More specifically, with respect to
`the first disputed recitation, Patent Owner contends that because no
`instruction is issued, the collecting is not “in response” to the assessment
`program. Id. at 7–9. With respect to the second disputed recitation, Patent
`Owner contends Rappaport teaches a “localized” system and does not teach
`a system with a “geographically remote” computing device. Id. at 15–16.
`Consistent with Petitioner’s contentions (Pet. 27–29), Rappaport
`teaches “collect[ing] measurement data within the environment” by the
`handheld user (Ex. 1002, 18:12–13) and transmitting that data to the
`SitePlanner® software product residing on “a remote server computer”
`(id. at 18:13–15 (emphasis added)). Rappaport further teaches that the
`SitePlanner® software includes a module that optimizes “both the prediction
`model and prediction model parameters” (id. at 18:30–33) and, after
`optimization, the updated predictions “are sent back to the portable handheld
`computer over the aforementioned communications link” (id. at 18:44–48).
`According to Rappaport, such a system is illustrated in Figure 9, reproduced
`in the summary above, and the communications medium of the link is
`“wired or wireless.” Id. at 18:36–38.
`Furthermore, Patent Owner’s contention is not commensurate in scope
`with claim 1 because claim 1 does not require an instruction from the
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`geographically remote device, but instead recites “collecting . . . in response
`to the assessment program.” Consistent with Petitioner’s contentions (see,
`e.g., Pet. 13), Rappaport teaches an engineer may remain in the field while
`“making measurements within the network, receiving optimized predictions
`on the performance of the network, reconfiguring the communications
`network and associating components, and repeating the entire cycle to
`achieve maximum possible performance within minimal required time or
`effort.” Id. at 18:67–19:8 (emphasis added).
`In support of its contentions, Patent Owner also submits the
`declaration testimony of Dr. Sharony. Prelim. Resp. 7– 20 (citing
`Ex. 2001 ¶¶ 36–38, 54). “The Board’s decision will take into account a
`patent owner preliminary response . . . including any testimonial evidence,”
`however “a genuine issue of material fact created by such testimonial
`evidence will be viewed in the light most favorable to petitioner solely for
`purposes of deciding whether to institute an inter partes review.” See
`37 C.F.R. § 42.108. Dr. Sharony testifies that Rappaport’s system requires a
`trained professional (Ex. 2001 ¶ 37), but this testimony pertains to
`Rappaport not providing instructions, which is not required for claim 1.
`After consideration of the Petition and Preliminary Response, and the
`evidence cited therein, we are persuaded that Petitioner has provided
`sufficient showing of the disputed recitations of claim 1 for institution of
`trial.
`We now turn to Patent Owner’s second dispute, i.e., that Rappaport
`does not teach “a communication module configured to download a field
`management program stored in a computing device located remotely from
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`the handheld device,” recited in claim 7. Prelim. Resp. 17–20. As Patent
`Owner acknowledges (id. at 17), Petitioner contends:
`Given Rappaport’s teaching that the handheld device
`downloads programs from the remote computer, and the teaching
`that
`the handheld device
`includes
`field management
`programs/software, it would have been obvious to a skilled
`artisan to provide a handheld device with a communication
`module configured to download the field management program
`to the computing device using the very same processes described
`in Rappaport for
`transferring programs generally (i.e.,
`downloading a Palm OS application that is complementary to the
`SitePlanner® program for viewing and updating the model).
`Pet. 38–39 (citing Ex. 1006 ¶ 165).
`Patent Owner bases its dispute on the following: “[a]ny reference to a
`‘module’ of SitePlanner in Rappaport is located on the computing device,
`not the handheld device.” Prelim. Resp. 17–18. Although Patent Owner
`acknowledges “compact WPD files” are used by the handheld (id. at 17),
`Patent Owner nonetheless contends that Petitioner does not explain
`sufficiently how this is a “field management program” (id. at 18).
`Yet Patent Owner’s characterization of Rappaport as teaching
`SitePlanner® modules only on the computing device does not take into
`account fully the teachings of the reference. Instead, consistent with
`Petitioner’s contentions (Pet. 37–41), Rappaport teaches “representing
`sophisticated 3-D vector database of buildings and campuses of buildings in
`a compact space suited for a portable handheld computer system.” Ex.1002,
`7:14–17 (emphasis added). This representation uses “[a] file format termed
`Wireless Valley Communications Portable Database, or ‘WPD,’” which “is
`a file that is simply constructed so that storage space, bandwidth, and
`processor power need not be excessive.” Id. at 7:40–48. Furthermore,
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`Petitioner, specifically, points to “software in the hand-held computer” that
`uses these WPD files. See, e.g., Pet. 38 (citing e.g., Ex. 1002, 8:64–67); see
`also Ex. 1002, 6:42–44 (“[H]and-held computer 10 is programmed to
`provide on the display 12 two-dimensional layouts and three-dimensional
`images of a building or campus in which a communications network is or
`will be deployed.”)
`After consideration of the Petition and Preliminary Response, and the
`evidence cited therein, we are persuaded that Petitioner has provided
`sufficient showing of the disputed recitation of claim 7 for institution of trial.
`We turn to Patent Owner’s final dispute, i.e., that Petitioner has not
`shown sufficient reasons to combine the teachings of Rappaport. Prelim.
`Resp. 22–25. Patent Owner characterizes Petitioner’s contentions as
`conclusory, but identifies only one specific concern. Id. In particular,
`Patent Owner contends “Petitioner does not explain why a skilled artisan
`would look to attach a measurement device to Rappaport’s other
`embodiments such as establishing a connection with a computer depicted in
`Fig. 9.” Prelim. Resp. 24 (citing Ex. 1002, Fig. 10, 16:56–67, 17:1–12).
`On this record, we are persuaded by Petitioner because consistent with
`Petitioner’s contentions (Pet. 15–16), the teachings relied upon by Petitioner
`are aspects of the same handheld computer-to-server system. For example,
`regarding Patent Owner’s specific concern above, Rappaport teaches
`exemplary measurement devices including “a cable integrity tester, a signal
`quality measurement device, [and] a bit error rate or data throughput
`detector.” Ex. 1002, 16:62–63. Consistent with these examples, Rappaport
`teaches that these devices collect measurements, rather than establish a
`connection. Id. at 17:11, 17:43–47, 17:60–18:18.
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`Furthermore, contrary to Patent Owner’s contention, Rappaport
`teaches that these collected measurements are transferred back to the server,
`with specific reference to Figure 9. In particular, for claim 7, Petitioner
`points to a mode (Pet. 40 (citing Ex. 1002, 14:54–64, 18:3–18;
`Ex. 1006 ¶¶ 168–69)), in which “the user attaches a position-tracking
`device” and “[a]s the field user moves around the environment,
`measurements collected from a receiver are correlated with position
`information collected from the attached tracking device.” Ex. 1002, 18:3–
`10. Rappaport further teaches “[a]s a user of the hand held client collects
`measurement data within the environment, the collected data may be
`transmitted in real-time or near real-time to a remote server computer.”
`Id. at 18:12–15. In this regard, Rappaport continues by referring to Figure 9
`as showing “a system for transferring measurement data.” Id. at 18:36–37.
`On this record, therefore, even after consideration of Patent Owner’s
`contentions and evidence cited therein, we are persuaded that Petitioner’s
`reasoning is sufficient for institution of trial.
`Having reviewed the Petition and Preliminary Response, and the
`evidence cited therein, based on the record before us at this juncture,
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to claims 1 and 7 as obvious over Rappaport.
`
`
`c. Claims 2–6 and 8–15
`At this juncture, Patent Owner does not argue any of claims 2–6 or 8–
`15 separately. Prelim. Resp. 16, 20. With respect to Petitioner’s reasons to
`combine Rappaport’s embodiments, for the same reasons discussed with
`respect to independent claims 1 and 7, we are persuaded Petitioner’s
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`reasoning is sufficient for institution. We discuss the further recitations of
`these dependent claims below.
`We turn first to claim 9, from which claims 10–15 depend, directly or
`indirectly. Claim 9 depends directly from claim 7 and recites “wherein the
`communications module is further configured to enable real-time access to
`the field management program stored in the computing device.” Consistent
`with Petitioner’s contentions (Pet. 43), Rappaport teaches that the user in the
`field may make changes “on the fly” at the installation site, “while having
`the ability to communicate with a server with a wireless or wired link for
`updates to the environmental model.” Ex. 1002, 12:5–11. Also consistent
`with Petitioner’s contentions (Pet. 43), Rappaport, for example, teaches “the
`field engineer may communicate design changes back to desk top PC 100
`. . . for other engineers to examine in real-time or off-line” (Ex. 1002,
`14:22–26 (emphasis added)) and “the collected data may be transmitted in
`real-time or near real-time to a remote server computer or another client”
`(id. at 18:12–18 (emphasis added)). On this record, we are persuaded that
`Petitioner has provided sufficient showing for claim 9 for institution of trial.
`Turning second to claims 2 and 14, these claims depend from claims 1
`and 9, respectively, and further require rendering output data. Ex. 1001,
`13:51–54, 14:41–43. As discussed above, Rappaport teaches use of WPD
`files to represent “sophisticated” displays suited for a portable handheld
`computer system. Ex. 1002, 7:14–17. Consistent with Petitioner’s
`contentions (Pet. 31, 32, 47, 48), Rappaport also teaches rendering a 2-D or
`3-D display using these WPD files. See, e.g., id. at 8:13–67. Furthermore,
`regarding rendering the display of collected field data, Rappaport teaches
`that “[t]he prediction or simulated data is embedded directly within the WPD
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`database files, and then stored and displayed on the portable handheld
`computer.” See, e.g., id. at 15:37–41. On this record, we are persuaded that
`Petitioner has provided sufficient showing for claims 2 and 14 for institution
`of trial.
`Turning third to claims 3 and 8, these claims depend from claims 1
`and 7, respectively, and further require “wirelessly transmitting the collected
`field data” and “wirelessly download the field management program,”
`respectively. Ex. 1001, 13:55–57, 14:15–17. Consistent with Petitioner’s
`contentions (Pet. 33, 42), Rappaport, for example, teaches (1) “information
`can be transmitted between the handheld computer 10 and the PC 18 by
`means other than a serial link 20 (e.g., other wired or optical connections,
`wireless connections, etc.” (Ex. 1002, 9:37–42) (2) “the ability to
`communicate with a server with a wireless or wired link for updates to the
`environmental model” (id. at 12:9–11) and (3) “the present invention also
`contemplates a novel method for transferring, storing and displaying data in
`the field over a wired or wireless network medium” (id. at 14:16–22). On
`this record, we are persuaded that Petitioner has provided sufficient showing
`for claims 3 and 8 for institution of trial.
`Fourth, we turn to claims 4 and 15, which depend from claims 3 and 9
`respectively, and each of which further recites, “wherein the wireless
`transmitter . . . includes an infrared transmitter.” Ex. 1002, 13:58–59,
`14:44–47. Petitioner contends, with supporting evidence, it would have
`been obvious to include an infrared transmitter on the handheld. Pet. 34, 35,
`48, 49 (citing Ex. 1002, 9:37–42, 9:46–47; Ex. 1006 ¶¶ 144–49, 196–99;
`Ex. 1011, 7:16–23). On this record, we are persuaded that Petitioner has
`provided sufficient showing for claims 4 and 15 for institution of trial.
`
`17
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`
`Fifth, we turn to claim 5, which depends from claim 3 and further
`recites, “wherein the computing device includes a server.” Ex. 1002, 13:60–
`61. Consistent with Petitioner’s contentions (Pet. 35), Rappaport, for
`example, teaches updating “the computerized model of the communications
`network on the server 100.” Ex. 1002, 15:2–3. On this record, we are
`persuaded that Petitioner has provided sufficient showing for claim 5 for
`institution of trial.
`Sixth, we turn to claims 6 and 11, which depend from claims 1 and 9,
`respectively. Each of claims 6 and 11 further recites that the assessment
`program or the field management program, respectively, includes at least
`one of “a construction industry,” “HVAC,” “project management,”
`“equipment readiness,” “troubleshooting,” “inventory,” “legal
`investigation,” or “multi-user coordination” program.” Ex. 1001, 13:63–67,
`14:27–31. Petitioner contends, “[t]his limitation should not be given
`patentable weight because it simply identifies multiple broad fields in which
`the program may operation—it does not identify any patentable distinction
`over claim 1.” Pet. 35 (regarding claim 6); see also id. at 45 (“[l]ike claim 6,
`claim 11” includes “a list of broadly-defined programs” and “should not be
`given patentable weight.”). Petitioner’s contention is unrebutted at this
`juncture of the proceeding. On this record, we agree with Petitioner that the
`further recitations of claims 6 and 11 should not be given patentable weight.
`For at least this reason, we are persuaded that Petitioner has provided
`sufficient showing for claims 6 and 11 for institution of trial.
`Seventh, we turn to claims 10, 12, and 13. Claims 10 and 12 depend
`from claim 9 and further recite “wherein the communication module is
`further configured to establish a two-way communication channel” and
`
`18
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`“wherein the communication module is further configured to synchronize
`the field management program or the collected field data between the
`handheld device and the computing device,” respectively. Ex. 1001, 14:23–
`26, 14:32–35. Claim 13 depends directly from claim 12 and further recites
`that the synchronization uses a wireless radio channel. Id. at 14:36–40.
`Consistent with Petitioner’s contentions for claims 10 and 12 (Pet. 43–46),
`Rappaport, for example, teaches “bi-directional data flow” between the
`handheld and remote (Ex. 1002, 5:27–28) and providing updates to both the
`remote and handheld (id. at 5:18–24, 5:27–30, 12:1–27, 14:1–64). For at
`least the reasons discussed above with respect to claims 3 and 8, we are
`persuaded that Petitioner has shown sufficiently this synchronization using a
`wireless radio channel, as recited in claim 13. On this record, we are
`persuaded that Petitioner has provided sufficient showing for claims 10, 12,
`and 13 for institution of trial.
`Having reviewed the Petition and Preliminary Response, and the
`evidence cited therein, based on the record before us at this juncture,
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to claims 2–6 and 8–15 as obvious over Rappaport.
`
`
`d. Claim 18
`As discussed above with respect to claim construction, neither party
`disputes that claim 18 recites a means-plus-function claim limitation:
`“means for managing data collected at the field using the at least one
`handheld device responsive to program.” We turn to the Petitioner’s
`identification of the recited function and the specific portions of the
`specification that describe the structure, material, or acts corresponding to
`
`19
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`the claimed function under 37 C.F.R. § 42.104(b)(3) for that means-plus-
`function limitation. Pet. 8–13. Based on the record before us, we are not
`persuaded by Petitioner’s contentions using Petitioner’s identification of
`structure corresponding to the “means for managing data collected at the
`field using the at least one handheld device responsive to program”
`limitation recited in independent claim 18.
`More specifically, Petitioner provides the following citations
`regarding the structure corresponding to that “means for” limitation: “Ex.
`1001 Fig. 2 (processor 22 and RAM 26), 7:50–8:12 (“field data management
`program”), 6:5–9; see Ex. 1006 ¶ 57.” Pet. 10. With respect to the portion
`of the ’581 patent that Petitioner contends corresponds to the field
`management program, which is only “Ex. 1001, 7:50–8:12” (id.), the ’581
`patent describes “[t]he program would prompt the user for input of data
`related to the problem.” Ex. 1001, 7:54–55. Petitioner does not show
`sufficiently where Rappaport teaches the program prompting the user to
`input data or identify teachings in Rappaport that are equivalent. See
`Pet. 51. As discussed above with respect to independent claims 1 and 7,
`Rappaport teaches repeating the cycle of making measurements, receiving
`optimized predictions, and reconfiguring the network. Ex. 1002, 19:1–8.
`However, Petitioner has not shown sufficiently that this teaching, or any
`other teaching in Rappaport, is the same or equivalent to a program that
`prompts the user to input data.
`On this record, Petitioner has not established a reasonable likelihood
`that it would prevail with respect to claim 18 as obvious over Rappaport.
`
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`e. Claim 19, 21, 23, and 24
`Each of claims 19, 21, 23, and 24 depends directly from claim 18.
`Petitioner does not provide for these claims any argument or evidence
`overcoming the deficiency noted above for claim 18. For the reasons given,
`on this record, Petitioner has not established a reasonable likelihood that it
`would prevail with respect to claims 19, 21, 23, and 24 as obvious over
`Rappaport.
`
`
`3. Alleged Obviousness over Rappaport and DeLorme
`(Claim 16)
`Petitioner contends that claim 16 would have been obvious over
`Rappaport and DeLorme. Pet. 57–60. For the reasons given below,
`Petitioner has demonstrated a reasonable likelihood that it would prevail
`with respect to this challenge.
`
`
`a. Overview of DeLorme
`DeLorme describes “[a]n Integrated Routing/Mapping Information
`System (IRMIS)” that links cartographic applications to handheld
`organizers, PDAs, or “palmtop” devices. Ex. 1003, [57]. According to
`DeLorme, such devices are equipped with portable Global Positioning
`System (GPS) sensing devices. Id.
`
`
`b. Claim 16
`Claim 16 depends from claim 9 and recites, “wherein the position
`module is further configured to provide navigable inst
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