`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`Civil Action No. 2:16-cv-00980-JRG
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`INTELLECTUAL VENTURES II LLC,
`
`
`
`
`v.
`
`FEDEX CORP., FEDERAL EXPRESS
`CORP., FEDEX GROUND PACKAGE
`SYSTEM, INC., FEDEX FREIGHT,
`INC., FEDEX CUSTOM CRITICAL
`INC., FEDEX OFFICE AND PRINT
`SERVICES, INC., and GENCO
`DISTRIBUTION SYSTEM, INC.,
`
`
`
`Defendants.
`
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`Pursuant to Local Patent Rule (“P.R.”) 3-3 and the Docket Control Order (Dkt. No. 54),
`
`Defendants FedEx Corporation, 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. (collectively, “FedEx” or “Defendants”) respectfully set forth
`
`their invalidity contentions for the asserted claims of U.S. Patent Nos. 6,633,900
`
`(“the ’900 patent”), 6,909,356 (“the ’356 patent”), 7,199,715 (“the ’715 patent”), 8,494,581
`
`(“the ’581 patent”), and 9,047,586 (“the ’586 patent”) (collectively, the “asserted patents”).
`
`These invalidity contentions address claim 1 of the ’900 patent, claims 1, 3-5, 7, 11-14,
`
`and 17 of the ’356 patent, claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22, 23, and 25 of the ’715 patent,
`
`claims 1-14, 16-20, and 24 of the ’581 patent, and claims 7, 8, 12, 13, 16, 18, and 19 of the ’586
`
`patent, which are the only claims identified by Plaintiff Intellectual Ventures II LLC (“IV2” or
`
`“Plaintiff”) in its January 17, 2017, infringement contentions.
`
`Exhibit 2115 Page 1
`
`IV Exhibit 2115
`FedEx v. IV
`Case IPR2017-02043
`
`

`

`To the extent that Defendants’ invalidity contentions rely on or otherwise embody
`
`particular constructions of terms or phrases in the asserted claims, Defendants are not proposing
`
`or adopting any such constructions as proper constructions of those terms or phrases at this time.
`
`The Court established separate deadlines for the parties’ proposed claim constructions in the
`
`Docket Control Order (Dkt. No. 54), and Defendants will disclose their proposed constructions
`
`according to those deadlines. For purposes of these invalidity contentions, Defendants may adopt
`
`alternative claim construction positions and broadly interpret each term or phrase. Certain of
`
`these invalidity contentions may be based on claim constructions that appear to underlie
`
`Plaintiff’s infringement contentions or claim construction positions in this or in earlier cases.
`
`Defendants, however, do not concede that Plaintiff’s apparent constructions are proper and
`
`reserve the right to contest any such constructions. Moreover, Defendants do not admit that any
`
`accused product, method, or service—including any of Defendants’ products, methods, or
`
`services—infringes any of the asserted claims. Nothing stated herein shall be treated as an
`
`admission, acknowledgement, acquiescence, or suggestion regarding the scope of any of the
`
`asserted claims or that any accused technology meets any limitations of the claims.
`
`Nothing stated herein shall be construed as an admission or a waiver of any particular
`
`construction of any claim term. Moreover, use of terms herein from the ’900, ’356, ’715, ’581,
`
`and/or ’586 patents should not be understood to mean that such terms as used in
`
`the ’900, ’356, ’715, ’581, and/or ’586 patents, or claims, thereof are definite, enabled, or
`
`supported by adequate written description in accordance with 35 U.S.C. §§ 112(1), (2).
`
`Likewise, use of terms herein from the ’900, ’356, ’715, ’581, and/or ’586 patents should not be
`
`understood to suggest or imply a common, usual, ordinary, customary, plain, or accepted
`
`meaning in the art for any such term.
`
` 2
`
`
`
`Exhibit 2115 Page 2
`
`

`

`Pursuant to P.R. 3-3(c), Defendants have, in the attached appendices, identified where the
`
`subject matter recited in the preambles of the asserted claims may be found in various prior art
`
`references, without regard to whether the preambles are properly considered to be limitations of
`
`the asserted claims. Defendants reserve the right to argue that any of the preambles are or are not
`
`limiting during the claim construction proceedings in this case.
`
`Defendants’ invalidity contentions are based on their current knowledge of
`
`the ’900, ’356, ’715, ’581, and ’586 patents, the prior art, Plaintiff’s infringement contentions,
`
`and upon information presently and reasonably available to Defendants. This litigation is in the
`
`early stages, and Defendants’ investigation of the prior art is ongoing. Defendants reserve the
`
`right to supplement, amend, modify, revise, or correct any aspect of their invalidity contentions
`
`and to provide additional information as such information becomes available through discovery
`
`or otherwise. No aspect of Defendants’ invalidity contentions shall be deemed to be an
`
`admission that their invalidity contentions are complete. In particular, Defendants reserve the
`
`right to supplement their invalidity contentions as discovery continues and after any further
`
`claim construction by the Court. In addition, Defendants also reserve the right to supplement
`
`their invalidity contentions should Plaintiff subsequently attempt to amend its P.R. 3-1 or 3-2
`
`disclosures in any way, or to otherwise modify its infringement allegations against Defendants or
`
`seek to establish an earlier date of invention (while reserving all rights to challenge any attempt
`
`by Plaintiff to do so).
`
`Defendants further reserve the right to supplement their invalidity contentions with
`
`information subsequently provided by Plaintiff concerning its infringement contentions.
`
`Plaintiff’s purported infringement contentions and accompanying claim charts served
`
`January 17, 2017, fail to identify specifically for many of the asserted claim limitations the
`
` 3
`
`
`
`Exhibit 2115 Page 3
`
`

`

`allegedly infringing structures and acts in the accused products and methods, in contravention of
`
`P.R. 3-1. Plaintiff’s failure to identify specifically infringing structures and acts prevents
`
`Defendants from searching for, locating, presenting, and relying on prior art having all or some
`
`of such structures and acts, thus effectively denying Defendants the opportunity to rely on the
`
`fundamental principle that whatever infringes a claim if later in time anticipates the claim if
`
`earlier in time, and further denying Defendants the opportunity to conduct other invalidity
`
`analytical methods.
`
`I.
`
`INVALIDITY UNDER 35 U.S.C. §§ 102 AND 103
`
`The asserted claims of the ’900, ’356, ’715, ’581, and ’586 patents are invalid as
`
`anticipated by the prior art under various subsections of 35 U.S.C. § 102 and/or as obvious in
`
`view of the prior art under 35 U.S.C. § 103. Pursuant to P.R. 3-3(c), the charts attached as
`
`appendices to these invalidity contentions set forth how prior art identified by Defendants
`
`anticipates either expressly or inherently, and/or renders obvious, each asserted claim. In
`
`addition, Defendants incorporate by reference invalidity contentions served in the prior
`
`litigations, including Case Nos. 2:15-cv-01414 and 6:16-cv-00195 in the Eastern District of
`
`Texas. Defendants reserve the right to rely on any information included in those prior
`
`contentions not yet produced by Plaintiff.
`
`In the charts, Defendants cite various relevant portions of the identified prior art
`
`references, but other portions may contain additional or different support for a particular claim
`
`limitation, and thus may additionally anticipate, either expressly or inherently, and/or render
`
`obvious, one or more of the asserted claims. Persons of ordinary skill in the art at the time of the
`
`filing of the asserted patents knew to read references as a whole, and in the context of other
`
`publications and literature and the general knowledge in the field.
`
` 4
`
`
`
`Exhibit 2115 Page 4
`
`

`

`Defendants may rely on any such information, including uncited portions of the prior art,
`
`prior art incorporated by reference, other prior art (some of which is specifically identified
`
`below), references that show the state of the art (irrespective of whether such references
`
`themselves qualify as prior art to the patent-in-suit), and/or expert testimony to provide context
`
`to or aid in understanding the cited portions of the identified prior art or to establish that a person
`
`of ordinary skill in the art would have been motivated to modify or combine any of the cited
`
`references so as to render the claims obvious, or that one of ordinary skill in the art would have
`
`found it obvious to perform any step of any method, or to add any structure of any claim at the
`
`time of the purported invention, whether or not the step or structure, respectively, is disclosed by
`
`the reference in the chart.
`
`Where Defendants cite a particular drawing or figure in the accompanying charts, the
`
`citation encompasses and incorporates by such reference the description of the drawing or figure,
`
`as well as any text associated with the drawing or figure (even if the associated text is not itself
`
`expressly cited). Similarly, where Defendants cite particular text concerning a drawing or figure
`
`in the accompanying charts, the citation encompasses and incorporates by such reference that
`
`drawing or figure as well (even if the associated drawing or figure is not expressly cited).
`
`Certain pieces of identified prior art inherently disclose features of the asserted claims.
`
`Defendants may rely on inherency to demonstrate the invalidity of the asserted claims. Moreover,
`
`certain prior art references and solutions may inherently anticipate certain features of the asserted
`
`claims as construed by Plaintiff. Defendants may rely on cited or uncited portions of the prior art,
`
`other documents, and expert testimony to establish the inherency of certain features of the prior
`
`art to invalidate the asserted claims. Defendants also may rely on any reference identified in
`
` 5
`
`
`
`Exhibit 2115 Page 5
`
`

`

`these invalidity contentions or any other reference to prove that the references are enabled or to
`
`explain the meaning of a term used in any reference.
`
`Defendants further reserve the right to prove the invalidity of the asserted claims on bases
`
`other than those required to be disclosed in these disclosures and contentions pursuant to
`
`P.R. 3-3, and to rely on documents other than those required to be produced pursuant to P.R. 3-4,
`
`including but not limited to further documents that establish what any of the produced references
`
`meant to persons of ordinary skill in the fields of the asserted patents, that confirm the contents
`
`of any reference, or that show that the claimed subject matter of the asserted patents, as disclosed
`
`in any reference, was in the public’s possession.
`
`A.
`
`Prior Art References
`
`Pursuant to P.R. 3-3(a), and in light of Plaintiff’s infringement contentions, Defendants
`
`identify the following prior art references and systems currently known to Defendants that
`
`anticipate and/or render obvious one or more of the asserted claims. With respect to the system
`
`prior art identified below, the asserted claims of the ’900, ’356, ’715, ’581, and ’586 patents are
`
`anticipated and/or rendered obvious both the public use, sale, offer for sale, public knowledge,
`
`and prior invention associated with such systems, and by the specific references identified below,
`
`whether taken alone or in combination. Pursuant to the discovery framework of this case,
`
`Defendants intend to obtain further evidence relating to such prior art systems, such as testimony
`
`and additional documents. Defendants intend to rely on such evidence in support of these prior
`
`art systems.
`
`1. U.S. Patent No. 4,896,029 (“Chandler”), issued Jan. 23, 1990
`2. U.S. Patent No. 4,922,516 (“Butler”), issued May 1, 1990
`3. U.S. Patent No. 5,122,959 (“Nathanson”), issued Jun. 16, 1992
`4. U.S. Patent No. 5,298,731 (“Ett”), issued Mar. 29, 1994
`
` 6
`
`
`
`Exhibit 2115 Page 6
`
`

`

`5. U.S. Patent No. 5,363,425 (“Mufti”), issued Nov. 8, 1994
`6. U.S. Patent No. 5,513,111 (“Wortham”), issued Apr. 30, 1996
`7. U.S. Patent No. 5,528,518 (“Bradshaw”), issued Jun. 18, 1996
`8. U.S. Patent No. 5,561,446 (“Montlick”), issued Oct. 1, 1996
`9. U.S. Patent No. 5,589,835 (“Gildea”), issued Dec. 31, 1996
`10. U.S. Patent No. 5,664,113 (“Worger”), issued Sept. 2, 1997
`11. U.S. Patent No. 5,671,362 (“Cowe”), issued Sept. 23, 1997
`12. U.S. Patent No. 5,682,142 (“Loosmore”), issued Oct. 28, 1997
`13. U.S. Patent No. 5,708,423 (“Ghaffari”), issued Jan. 13, 1998
`14. U.S. Patent No. 5,712,789 (“Radican”), issued Jan. 28, 1998
`15. U.S. Patent No. 5,715,905 (“Kaman”), issued Feb. 10, 1998
`16. U.S. Patent No. 5,724,243 (“Westerlage”), issued Mar. 3, 1998
`17. U.S. Patent No. 5,777,884 (“Belka”), issued July 7, 1998
`18. U.S. Patent No. 5,804,802 (“Card”), issued Sept. 8, 1998
`19. U.S. Patent No. 5,857,201 (“Wright”), issued Jan. 5, 1999
`20. U.S. Patent No. 5,880,958 (“Helms”), issued Mar. 3, 1999
`21. U.S. Patent No. 5,886,634 (“Muhme”), issued Mar. 23, 1999
`22. U.S. Patent No. 5,920,846 (“Storch”), issued Jul. 6, 1999
`23. U.S. Patent No. 5,963,134 (“Bowers”), Oct. 5, 1999
`24. U.S. Patent No. 6,061,607 (“Bradley II”), May 9, 2000
`25. U.S. Patent No. 6,064,642 (“Stephenson”), issued Jul. 25, 2000
`26. U.S. Patent No. 6,065,120 (“Laursen”), issued May 16, 2000
`27. U.S. Patent No. 6,073,062 (“Hoshino”), issued Jun. 6, 2000
`28. U.S. Patent No. 6,083,353 (“Alexander”), issued Jul. 4, 2000
`29. U.S. Patent No. 6,094,642 (“Stephenson”), issued Jul. 25, 2000
`30. U.S. Patent No. 6,102,162 (“Teicher”), issued Aug. 15, 2000
`31. U.S. Patent No. 6,131,116 (“Riggins”), issued Oct. 10, 2000
`32. U.S. Patent No. 6,148,261 (“Obradovich”), issued Nov. 14, 2000
`33. U.S. Patent No. 6,216,158 (“Luo”), issued Apr. 10, 2001
`34. U.S. Patent No. 6,272,457 (“Ford”), issued Aug. 7, 2001
`35. U.S. Patent No. 6,289,260 (“Bradley I”), issued Sept. 11, 2001
`36. U.S. Patent No. 6,292,181 (“Banerjee”), issued Sept. 18, 2001
`37. U.S. Patent No. 6,300,872 (“Mathias”), issued Oct. 9, 2001
`
` 7
`
`
`
`Exhibit 2115 Page 7
`
`

`

`38. U.S. Patent No. 6,300,873 (“Kucharczyk”), issued Oct. 9, 2001
`39. U.S. Patent No. 6,321,158 (“DeLorme”), issued Nov. 20, 2001
`40. U.S. Patent No. 6,456,239 (“Werb”), issued Sept. 24, 2002
`41. U.S. Patent No. 6,509,828 (“Bolavage”), issued Jan. 21, 2003
`42. U.S. Patent No. 6,553,375 (“Huang”), issued Apr. 22, 2003
`43. U.S. Patent No. 6,587,835 (“Treyz”), issued Jul. 1, 2003
`44. U.S. Patent No. 6,609,090 (“Hickman”), issued Aug. 19, 2003
`45. U.S. Patent No. 6,625,454 (“Rappaport II”), issued Sept. 23, 2003
`46. U.S. Patent No. 6,633,900 (“Khalessi”), issued Oct. 14, 2003
`47. U.S. Patent No. 6,671,757 (“Multer”), issued Dec. 30, 2003
`48. U.S. Patent No. 6,748,318 (“Jones” or “Jones I”), issued Jun. 8, 2004
`49. U.S. Patent No. 6,952,645 (“Jones II”), issued Oct. 4, 2005
`50. U.S. Patent No. 6,909,356 (“Brown”), issued June 21, 2006
`51. U.S. Patent No. 6,947,976 (“Devitt”), issued Sept. 20, 2005
`52. U.S. Patent No. 6,971,063 (“Rappaport”), issued Nov. 29, 2005
`53. U.S. Patent No. 6,993,592 (“Krumm”), issued Jan. 31, 2006
`54. U.S. Patent No. 7,012,529 (“Sajkowsky”), issued Mar. 14, 2006
`55. U.S. Patent No. 7,020,701 (“Gelvin”), issued Mar. 28, 2006
`56. U.S. Patent No. 7,103,886 (“Haller”), issued Sept. 5, 2006
`57. U.S. Patent No. 7,113,099 (“Tyroler”), issued Sept. 26, 2006
`58. U.S. Patent No. 7,191,392 (“Coar”), issued Mar. 13, 2007
`59. U.S. Patent No. 7,209,771 (“Twitchell”), issued April 24, 2007
`60. U.S. Patent No. 7,312,752(“Smith”), issued Dec. 25, 2007
`61. U.S. Patent No. 7,761,347 (“Fujisawa”), issued July 20, 2010
`62. U.S. Patent No. 7,844,505 (“Arneson”), issued Nov. 30, 2010
`63. U.S. Patent No. 8,321,302 (“Bauer”), issued Nov. 27, 2012
`64. U.S. Patent No. 8,438,084 (“Tesler”), issued May 7, 2013
`65. U.S. Patent Publication No. 2001/0051905 (“Lucas”), issued Dec. 13, 2001
`66. U.S. Patent Publication No. 2002/0065728 (“Ogasawara”), published May 30,
`2002
`67. U.S. Patent Publication No. 2003/0177025 (“Curkendall”), issued Sept. 18, 2003
`68. U.S. Patent Publication No. 2005/0108044 (“Koster”), issued May 19, 2005
`69. U.S. Patent Publication No. 2006/0049250 (“Sullivan”), issued Mar. 9, 2006
`
` 8
`
`
`
`Exhibit 2115 Page 8
`
`

`

`70. PCT International Publication No. WO 96/27171 (“Kadaba”), published
`Sept. 6, 1996
`71. One or more generations of the United Parcel Service, Inc. (“UPS”) Delivery
`Information Acquisition Device (“DIAD”) and/or the UPS systems with which
`the DIAD communicates (collectively, the “UPS Prior Art Systems”), publicly
`known and in public use by UPS prior to Jan. 9, 1998, which is disclosed in
`and/or related to:
`• U.S. Patent No. 6,285,916 (“Kadaba II”), issued Sept. 4, 2001
`• John Kralovec, IS-Directed Reengineering Implementation Avenues,
`Information Systems Management 12:1, at 80 (1995)
`• Gary A Fergusuon, UPS’s Industrial Engineers Set New Pace for Change by
`Moving at the Speed of Business, Industrial Engineering Solutions, at 31
`(May 1995)
`72. One or more of the FedEx Customer Operations Service Master On-Line System
`(“COSMOS”), FedEx Digitally Assisted Dispatch System (“DADS”), FedEx
`Supertracker, FedEx Enhanced Supertracker, FedEx DADS Terminal, FedEx
`DADS Handheld, and FedEx PowerPad, formed one or more prior art systems
`(the “FedEx Prior Art Systems”), publicly known and in public use by FedEx
`prior to Jan. 9, 1998, which is disclosed in and/or related to:
`• U.S. Patent No. 6,094,642 (“Stephenson”), issued Jul. 25, 2000
`• Carl Nehls, Custodial Package Tracking at Federal Express, in Managing
`Innovation: Cases from the Services Industries, National Academy of
`Engineering, at 57-81 (1988)
`• Federal Express, Enhanced SuperTracker (EST) Maintenance Manual (Aug.
`31, 1997)
`• Federal Express, Future Courier Tool Concepts, V0.2 (May 10, 1995)
`• Federal Express, DADS User Manual (Training Version) (May 1995)
`• Federal Express, The Federal Express DADS Handheld: An Introduction,
`V1.2 (Apr. 17, 1995)
`• Federal Express, FMT941 Mobile Data Terminal Maintenance Manual (Aug.
`31, 1994)
`• Richard O. Mason, Absolutely, Positively Operations Research: The Federal
`Express Story, Institute for Operations Research and the Management
`Sciences, Interfaces 27:2 (Mar.-Apr. 1997).
`
` 9
`
`
`
`Exhibit 2115 Page 9
`
`

`

`73. The OmniTRACS Mobile Communications System by QUALCOMM
`(“OmniTRACS” or the “OmniTRACS System”), publicly known, in public use,
`and offered for sale by QUALCOMM prior to Jan. 9, 1998, which is disclosed in
`and/or related to:
`• Agis Salpukas, Business Technology; Satellite System Helps Trucks Stay in
`Touch, N.Y. TIMES, June 5, 1991,
`http://www.nytimes.com/1991/06/05/business/business-technology-satellite-
`system-helps-trucks-stay-in-touch.html
`• Dimitris A Scapinakis & William L. Garrison, Communications and
`Positioning Systems in the Motor Carrier Industry, California Partners for
`Advanced Transportation Technology, PATH Research Report UCB-ITS-
`PRR-91-10 (1991)
`• Dimitris A. Scapinakis & William L. Garrison, Studies of the Adoption and
`Use of Location and Communication Technologies by the Trucking Industry,
`California Partners for Advanced Transportation Technology, PATH Research
`Report UCB-ITS-PRR-91-2 (January 1, 1991)
`• Allen Salmasi, An Overview of the OmniTRACS - The First Operational
`Mobile Ku-Band Satellite Communications, N88-25689 (1988)
`• Franklin P. Antonio, et al., Technical Characteristics of the OmniTRACS -
`the First Operational Mobile Ku-Band Satellite Communications System,
`N88-25709 (1988)
`• Edward G. Tiedemann, Jr., et al., The OmniTRACS® Mobile Satellite
`Communications and Positioning System, SAE Technical Paper 901175
`(1990)
`Irwin M. Jacobs, et al., A Second Anniversary Operational Review of the
`OmniTRACS® - The First Two-way Mobile Ku-band Satellite
`Communications System, N92-24074 (1992)
`• Daniel L. Sellers & Thomas J. Bernard, An Update on the OmniTRACS Two-
`Way Satellite Mobile Communications System and Its Application to the
`Schneider National Truck Fleet, Society of Automotive Engineers, Inc. (Oct.
`1992)
`Irwin M. Jacobs, An Overview of the OmniTRACS®: the First Operational
`Two-Way Mobile Ku-Band Satellite Communications System, 7 Space
`Communications 1 (Dec. 1989)
`• OmniTRACS, Products and Technology, System Overview (Feb. 11, 1998),
`http:/www.omnitracs.com/OmniTRACS/products/system.html
`[https://web.archive.org/web/19980211122129/http://www.omnitracs.com/O
`mniTRACS/products/system.html].
`• OmniTRACS, Products and Technology, QTRACS (Feb. 11, 1998),
`http://www.omnitracs.com/OmniTRACS/products/qtracs.html
`
`•
`
`•
`
` 10
`
`
`
`Exhibit 2115 Page 10
`
`

`

`[https://web.archive.org/web/19980211122141/http://www.omnitracs.com/O
`mniTRACS/products/qtracs.html].
`• OmniTRACS, Products and Technology, QTRACS Functions (Feb. 11, 1998),
`www.omnitracs.com/OmniTRACS/products/functions.html
`[https://web.archive.org/web/19980211132349/http://www.omnitracs.com/O
`mniTRACS/products/functions.html]
`• OmniTRACS, Products and Technology, OmniTRACS Mobile
`Communications (Feb. 11, 1998),
`http://www.omnitracs.com/OmniTRACS/products/
`[https://web.archive.org/web/19980211114623/http://www.omnitracs.com/O
`mniTRACS/products/].
`• Qualcomm Press Release, Qualcomm Introduces OnTRACS State Mileage
`Reporting Software (Mar. 12, 1997),
`https://www.qualcomm.com/news/releases/1997/03/12/qualcomm-introduces-
`ontracs-state-mileage-reporting-software.
`• Qualcomm Press Release, Qualcomm Announces Availability of ETA and
`Out of Route Software product for OmniTRACS® Customers,
`https://www.qualcomm.com/news/releases/1996/03/18/qualcomm-announces-
`availability-eta-and-out-route-software-product.
`• OmniTRACS, Products and Technology, TrailerTRACS (Feb. 11, 1998),
`http://www.omnitracs.com/OmniTRACS/products/ttracs.html
`[https://web.archive.org/web/19980211132618/http://www.omnitracs.com/O
`mniTRACS/products/ttracs.html]
`• OmniTRACS, Products and Technology, Information Reporting Systems (Feb.
`11, 1998), http://www.omnitracs.com/OmniTRACS/products/info.htm
`[https://web.archive.org/web/19980211122218/http://www.omnitracs.com/O
`mniTRACS/products/info.html]
`• OmniTRACS, Products and Technology, QTRACS Platforms (Feb. 11, 1998),
`http://www.omnitracs.com/OmniTRACS/products/platforms.html
`[https://web.archive.org/web/19980211132355/http://www.omnitracs.com/O
`mniTRACS/products/platforms.html]
`74. One or more generations of SitePlanner from Wireless Valley Communications,
`Inc. (“Wireless Valley”), including its PalmFielder, InFielder, Predictor,
`Optimatic, and Building Database Manager (BDM) modules (collectively, the
`“SitePlanner Systems”), publicly known, in public use, and offered for sale by
`Wireless Valley prior to September 25, 2000, which is disclosed in and/or related
`to:
`• U.S. Patent No. 6,971,063 to Rappaport (“Rappaport”)
`• U.S. Patent No. 6,625,454 to Rappaport (“Rappaport II”)
`• Bill Schweber, With the Right Tools, You Can Score Big in the RF Field of
`Dreams, EDN Magazine, Techtrends (Jul. 6, 2000).
`
` 11
`
`
`
`Exhibit 2115 Page 11
`
`

`

`• Robert K. Morrow, Jr., et al., Getting In: In-building Coverage Is a Must. New
`Software and CAD Renditions Can Help You Achieve RF Penetration,
`www.wirelessreview.com, Wireless Review (Mar. 1, 2000)
`InFielder PDA, Wireless Valley Communications, Inc., (May 17, 2001)
`•
`• Roger R. Skidmore & Theodore S. Rappaport, SMT Plus 1.0 User’s Manual,
`Virginia Tech (Aug. 1996).
`• Theodore S. Rappaport, et al., SitePlanner 3.0 User’s Manual, Wireless
`Valley Communications, Inc. (1998)
`• PalmFielder, Wireless Valley Communications, Inc. (Jan. 16, 2001)
`• PalmFielder, Wireless Valley Communications, Inc. (Dec. 26, 2000)
`• SiteSpy User’s Manual, Wireless Valley Communications, Inc., (Dec. 14,
`2000)
`• SitePlanner 2000 User’s Manual, Wireless Valley Communications, Inc.,
`(Aug. 22, 2000)
`• SitePlanner 2000 Setup and Quick Start Guide, Wireless Valley
`Communications, Inc. (Aug. 22, 2000)
`• SitePlanner, User’s Manual, Wireless Valley Communications, August 16,
`1999
`InFielder Documentation, ZK Celltest ZK-SAM Receivers DX-136 & DXC,
`Wireless Valley Communications, Inc. (August 23, 2000)
`InFielder Documentation, ZK Celltest ZK-SAM Receivers, Wireless Valley
`Communications, Inc. (Jun. 22, 1999)
`• Theodore S. Rappaport et al., SitePlanner 4.0 User’s Manual, Wireless Valley
`Communications, Inc. (August 16, 1999)
`75. The the SpotON system (“SpotOn”) by the University of Washington and/or Palo
`Alto Research Center Incorporated (“PARC”), publicly known, in public use, and
`offered for sale by the University of Washington and/or PARC prior to
`November 2, 2001, which is disclosed in and/or related to:
`• Jeffrey Hightower et al., SpotON: An Indoor 3D Location Sensing Technology
`Based on RF Signal Strength 1-16 (2000)
`76. Taylor, Mark A., Increasing Profit & Productivity Through Technology,
`Computerized Shipping Systems, 1995 (“Computerized Shipping Systems”)
`• American National Standards Institute MH10.8.3M-1996, Aug. 1996
`(“ANSI”)
`77. The Multicode System by RPS (“Multicode System”) publicly known, in public
`use, and offered for sale by RPS prior to May 30, 2001, which is disclosed in
`and/or related to:
`• RPS, RPS Multicode Bar Code Label Guide, Apr. 1998 (“Multicode Guide”)
`
`•
`
`•
`
` 12
`
`
`
`Exhibit 2115 Page 12
`
`

`

`• RPS, RPS’s Multicode (SM) Gives Shippers, Oct. 18, 1995
`• The Future of Bar Code Technology, Scanner, Vol. X. Issue 5 (1995)
`• RPS, “Multicode” January 1996
`78. The UPS System by UPS (“UPS”) publicly known, in public use, and offered for
`sale by RPS prior to May 30, 2001, which is disclosed in and/or related to:
`• United Postal Service, Guide to Bar Coding with UPS For Customers
`Generating Bar Code Labels, Ver. III (Jan. 1996) (“UPS Guide”)
`79. The FedEx interNetShip System by Federal Express (“interNetShip System”)
`publicly known, in public use, and offered for sale by RPS prior to May 30, 2001,
`which is disclosed in and/or related to:
`• Federal Express, FedEx interNetShip Customer Automation Manual, Shipping
`the Internet Way Now There’s FedEx internNetShip, (Oct. 6, 1997) -
`Confidential
`• Federal Express, Intro to FedEx Ship & interNetShip part 1 Video, (1990s)
`(“interNetShip Video 1”) - Confidential
`• Federal Express, FedEx Ship Tutorial Video, (1990s) - Confidential
`80. The FedEx Ship System (“FedEx Ship System”) publicly known, in public use,
`and offered for sale by RPS prior to May 30, 2001, which is disclosed in and/or
`related to:
`• Federal Express, Video “Intro to FedEx Ship & interNetShip” part 1 (1990s) -
`Confidential
`• Federal Express, FedEx Ship Tutorial part 2 Video, (1990s) - Confidential
`• Federal Express, New and Improved FedEx Ship Software is Available, (May
`1, 1999) available at
`https://web.archive.org/web/19990501085456/http://www.fedex.com/us/softw
`are/automation/ship.html#download
`• Federal Express, eBusiness Tools FedEx Ship, (August 15, 2000) available at
`https://web.archive.org/web/20000815054215/http://www.fedex.com/us/ebusi
`ness/eshipping/ship.html
`81. The FedEx PowerShip System (“PowerShip System”) publicly known, in public
`use, and offered for sale by RPS prior to May 30, 2001, which is disclosed in
`and/or related to:
`• Federal Express, PowersShip 3 Video (Mar. 1, 1997) - Confidential
`• Federal Express, Shipping Tools FedEx PowerShip Plus, (Oct. 1, 1999)
`available at
`https://web.archive.org/web/19991001094239/http://fedex.com/us/software/au
`tomation/powershipplus.html (“PowerShip Tools”)
`• Federal Express, Powership 2 (1994) - Confidential
`
` 13
`
`
`
`Exhibit 2115 Page 13
`
`

`

`• Federal Express, PowerShip 3 User Manual (1993) - Confidential
`• Federal Express, Federal Express Announces PowerShip-3
`Video,(Mar. 1994)-Confidential
`
`With respect to all of the above prior art systems, Defendants reserve the right to update
`
`these invalidity contentions with additional information concerning (i) the specific item(s)
`
`offered for sale or publicly used or known; (ii) the date(s) that the offer(s) or use(s) took place or
`
`the information became known; and (iii) the identity of the person(s) or entity(ies) that made the
`
`use(s), or made and received the offer(s), or the person(s) or entity(ies) that made the information
`
`known or to whom it was made known.
`
`B.
`
`Anticipation
`
`1.
`
`’900 Patent
`
`Each of the following prior art references or items anticipates one or more of the asserted
`
`claims of the ’900 patent, and thus those claims are invalid under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g).
`
`Prior Art
`
`Storch
`
`Jones
`
`OmniTRACS
`
`Kadaba
`
`Hoshino
`
`UPS Prior Art Systems
`
`Stephenson
`
`FedEx Prior Art Systems
`
`Claims Anticipated
`
`Appendix
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`A01
`
`A02
`
`A04
`
`A05
`
`A06
`
`A07
`
`A08
`
`A09
`
` 14
`
`
`
`Exhibit 2115 Page 14
`
`

`

`2.
`
`’356 Patent
`
`Each of the following prior art references or items anticipates one or more of the asserted
`
`claims of the ’356 patent, and thus those claims are invalid under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g).
`
`Claims Anticipated
`
`Appendix
`
`Prior Art
`
`Arneson
`
`Ghaffari
`
`Helms
`
`Bowers
`
`OmniTRACS
`
`The SpotON system
`
`Stephenson
`
`1, 3-5, 7, 11-14, and 17
`
`1, 3-5, 7, and 11-14
`
`1, 3, 11, and 14
`
`1, 3-5, 7, 11-14, and 17
`
`1, 3-5, 11, 12, and 14
`
`1, 3-5, 11, 12, and 14
`
`1, 7, 11, 12, and 14
`
`B01
`
`B14
`
`B11
`
`B18
`
`B20
`
`B21
`
`B22
`
`B23
`
`The FedEx Prior Art systems
`
`1, 7, 11, 12, and 14
`
`3.
`
`’715 Patent
`
`Each of the following prior art references or items anticipates one or more of the asserted
`
`claims of the ’715 patent, and thus those claims are invalid under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g).
`
`Prior Art
`
`Smith
`
`Bauer
`
`Jones II
`
`Krumm
`
`Claims Anticipated
`
`Appendix
`
`1, 4, 9, 11, 14, 19, and 22
`
`1, 4, 5, 7, 9, 11, 14, 15, 17,
`19, 22, 23, and 25
`
`1, 4, 11, 14, 15, 17, 19, 22,
`23, and 25
`
`1 and 4
`
`C01
`
`C02
`
`C05
`
`C15
`
` 15
`
`
`
`Exhibit 2115 Page 15
`
`

`

`Stephenson
`
`1, 3, 7, 9, 11, 14, 17, and 19
`
`FedEx Prior Art Systems
`
`1, 3, 7, 9, 11, 14, 17, and 19
`
`Kadaba
`
`1, 3, 7, 9, 11, 14, 17, and 19
`
`UPS Prior Art Systems
`
`1, 3, 7, 9, 11, 14, 17, and 19
`
`C23
`
`C24
`
`C25
`
`C26
`
`4.
`
`’581 Patent
`
`Each of the following prior art references or items anticipates one or more of the asserted
`
`claims of the ’581 patent, and thus those claims are invalid under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g).
`
`Claims Anticipated
`
`Appendix
`
`Prior Art
`
`Rappaport
`
`Devitt
`
`Bradshaw
`
`Hickman
`
`Treyz
`
`Ogasawara
`
`Ford
`
`Stephenson
`
`1-9, 11-14, 18-19, 24
`
`1-9, 11-14, 16, 18-19, 24
`
`1-3, 6-14, 18-19, 24
`
`1-3, 5-14, 16-20, 24
`
`1-14, 16-20, 24
`
`1-3, 5-14, 17-18, 24
`
`1-3, 6-7, 10-14, 18-20, 24
`
`1-14, 16-20, 24
`
`D01
`
`D02
`
`D03
`
`D04
`
`D05
`
`D08
`
`D09
`
`D10
`
`D11
`
`D12
`
`D13
`
`D14
`
`SitePlanner System
`
`1-9, 11-14, 18-19, 24
`
`FedEx Prior Art Systems
`
`1-14, 16-20, 24
`
`OmniTRACS
`
`1-3, 5-14, 16-20, 24
`
`UPS Prior Art Systems
`
`1-14, 16-20, 24
`
` 16
`
`
`
`Exhibit 2115 Page 16
`
`

`

`5.
`
`’586 Patent
`
`Each of the following prior art references or items anticipates one or more of the asserted
`
`claims of the ’586 patent, and thus those claims are invalid under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g).
`
`Prior Art
`
`ANSI
`
`Claims Anticipated
`
`Appendix
`
`7, 8, 12, 13, 16, 18, and 19
`
`E01
`
`E09
`
`E18
`
`E16
`
`MultiCode System
`
`7, 8, 12, 13, 16, 18, and 19
`
`UPS
`
`Coar
`
`7, 8, 12, 13, 16, 18, and 19
`
`7, 8, 12, and 16
`
`C.
`
`Obviousness
`
`Pursuant to P.R. 3-3(b), in this section and in the attached claim chart appendices, FedEx
`
`identifies the following exemplary combinations of prior art it presently intends to rely on to
`
`show that the asserted claims of the ’900, ’356, ’715, ’581, and ’586 patents are obvious. In each
`
`instance, FedEx contends that the identified claim is rendered obvious by the identified reference
`
`or references, either alone, or in combination with the knowledge of a PHOSITA. FedEx’s
`
`inclusion of exemplary combinations does not preclude FedEx from identifying other
`
`invalidating combinations as appropriate. For example, in addition to these exemplary
`
`combinations, each prior art reference listed below may be combined with one or more of the
`
`other prior art references to render the asserted claims obvious. The exemplary combinations
`
`identified below are alternatives to FedEx’s anticipation and single-reference obviousness
`
`contentions, and, thus, they should not be interpreted as indicating that any of the individual
`
`references included in the exemplary comb