`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`GOOGLE, LLC,
`Petitioner,
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`
`_____________
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`Case IPR2018-01080
`Patent 9,408,055 B2
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`_____________
`
`Record of Oral Hearing
`Held: September 6, 2019
`__________
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
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`
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`Case IPR2018-01080
`Patent 9,408,055 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL BERTA, ESQ.
`Arnold & Porter
`Three Embarcadero Center
`San Francisco, California 94111
`415-471-3277
`michael.berta@arnoldporter.com
`
`
`
`
`
`KAREN WONG-CHAN
`JONATHAN TUMINARO, PhD
`Sterne Kessler Goldstein & Fox
`1100 New York Avenue, Northwest
`Washington, D.C. 20005
`202-371-2600
`kwchan@sternekessler.com
`jtuminar@sternekessler.com
`
`JAMES SHERWOOD, ESQ.
`25 Massachusetts Avenue, Northwest
`9th Floor
`Washington, D.C. 20001
`650-701-7546
`jimsherwood@google.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`VINCENT J. RUBINO, III, ESQ.
`Brown Rudnick
`7 Times Square
`New York, New York 10036
`212-209-4974
`vrubino@brownrudnick.com
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`The above-entitled matter came on for hearing on Friday, September
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`6, 2019, commencing at 10:00 a.m. at the U.S. Patent and Trademark Office,
`26 S. 4th Street, San Jose, California.
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`P-R-O-C-E-E-D-I-N-G-S
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`9:59 a.m.
`JUDGE TROCK: Good morning, everyone. This is an inter parties
`review proceeding before the Patent Trial and Appeal Board in Case No.
`IPR2018-01080, Google versus AGIS Software Development, to consider
`the patentability of certain claims in U.S. Patent No. 9,408,055.
`The court reporter is transcribing what is said during this proceeding,
`and the transcript will become part of the record in this case.
`Before we proceed, please remember to speak into the lectern
`microphone and to identify, by number or exhibit, any demonstratives you
`may display. Also, remember that demonstratives are for illustrative or
`explanatory purposes only and are not considered evidence.
`Each side will have 30 minutes to present their case and may reserve
`some of that time for rebuttal. We will have appearances by counsel,
`starting with Petitioner.
`MR. BERTA: Your Honors, Michael Berta, Arnold & Porter, for
`Google. With me is Mr. Tuminaro, Ms. Wong-Chan from Sterne Kessler,
`and also James Sherwood from Google. Thank you.
`JUDGE TROCK: For Patent Owner?
`MR. RUBINO: Good morning, Your Honors. Vincent Rubino
`from the law firm of Brown Rudnick on behalf of Patent Owner AGIS
`Software Development, LLC.
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`JUDGE TROCK: Petitioner, you have 30 minutes. Would you
`like to reserve any time for rebuttal?
`MR. BERTA: Please, Your Honor. Ten minutes. Thank you.
`JUDGE JEFFERSON: Can you mute us?
`(Pause.)
`JUDGE TROCK: Are you ready, Judge Jefferson?
`JUDGE JEFFERSON: Sorry. Yes, I’m ready. Thank you.
`JUDGE TROCK: All right. Petitioner, you may begin.
`MR. BERTA: May I just address one very brief housekeeping item
`from yesterday even though it’s a different proceeding?
`JUDGE TROCK: Certainly.
`MR. BERTA: Thank you. I appreciate it. I just wanted to
`clarify the issue with respect to Paper 21 and Paper 22.
`Paper 21 was filed in error because it had an outdated exhibit list.
`And so what I believe we did was ask to have it expunged. And so Paper
`22 is the correct version. Thank you.
`JUDGE TROCK: Patent Owner, do you have any objection to that?
`MR. RUBINO: No, Your Honor. I believe we responded to
`Paper 22.
`JUDGE TROCK: Whenever you’re ready.
`MR. BERTA: Thank you, Your Honor.
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`JUDGE ZADO: I just wanted to clarify for the record that you’re
`referring to IPR2018-09079 when you were discussing expunging Paper 21?
`MR. BERTA: Apologies, Your Honor. Yes, that’s correct.
`JUDGE ZADO: Okay. Thank you.
`MR. BERTA: Your Honors, in the Patent Owner response -- may
`it please the Board -- and thank you for your time. I appreciate it.
`In the Patent Owner response, Patent Owner AGIS raises six issues
`regarding the institution decision and the Petition with respect to
`unpatentability in this matter.
`First, whether there’s a motivation to combine Sheha and Fumarolo
`for purposes of mapping Fumarolo to the second device with a display.
`And second is the issue of whether or not and what the first device is
`in Fumarolo, or Fumarolo in combination with Sheha, although there’s not a
`specific element that is challenged, as I understand it, with respect to Patent
`Owner’s response on this issue.
`Third is with respect to Lazaridis and what it discloses on IP-based
`communications.
`Fourth and fifth and sixth, are issues raised by Patent Owner
`regarding disclosures of prior art on particular dependent claims 242, 17 and
`22.
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`I had planned to briefly touch on all of those, but obviously if there
`are issues that the Board would like to discuss, I would much prefer to focus
`my time on issues that are of interest to the Board.
`The last four issues from Lazaridis on were not addressed in the sur-
`reply. So I don’t know whether they are clear issues or not still, or live
`issues, but I’m going to focus more on issues one and two.
`Generally speaking, our issue with the response in the sur-reply is
`that, in many instances, what Patent Owner says that Petitioner said in the
`Petition, or what the references say, or what the Patent Owner said Mr.
`Williams said, isn’t, in fact, what was actually stated either in the reference
`or in the testimony.
`And so I think if you go back to the sources for what was, in fact,
`stated or what is, in fact, disclosed in the references, that the objections that
`have been made, you would find, have no merit with respect to undermining
`the Petition.
`For example, let me just start with the first objection regarding
`second devices. The specific challenge to the second device disclosure is
`made in reference to what is, in fact, element 1.8 and the analogous elements
`in Claims 28 and 41 -- but was labeled “1.9,” with my apologies, in the
`opening petition -- the last element of the claim.
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`Now, what the issue is, is what AGIS appears to be specifically
`challenging is what the certain information is that is being transmitted to
`second devices to be added to the displays for those second devices.
`AGIS points out, which is correct, that the communication units of
`Fumarolo don’t have displays. So you have to use the mobile phones, as
`disclosed in Sheha, in place of the Fumarolo communication units to meet
`the elements of element -- I’ll call it 1.8.
`Now, if you were to substitute the devices as discussed in Sheha with
`the communication units that are discussed in Fumarolo, it does not appear
`to me that AGIS, in fact, contests that then the elements of element 1.8
`would be met. What they are contesting is whether that is an appropriate
`substitution or not.
`Now, obviously the Board addressed this issue. So I don’t want to
`spend too much time on the substitution of mobile phones in for
`communication units as the second device if the Board is not interested in it,
`but it is extensively laid out in the Petition with respect to what the
`motivation to combine would be.
`Fumarolo, for example, is written in 1999 or thereabouts. Sheha
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`was --
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`JUDGE TROCK: Counsel, let me interrupt you.
`One of the issues that Patent Owner brings up on the motivation to
`combine here with respect to second devices, is that Sheha, as a reference, is
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`a completely different system than the AVL system which is described in
`Fumarolo, and that somebody of ordinary skill in the art would not look to
`Sheha to replace those units -- those communication units with cell phones --
`MR. BERTA: Yes, sir.
`JUDGE TROCK: -- because Sheha is essentially describing a
`replacement system as opposed to improving them.
`MR. BERTA: Yes, Your Honor. And I think -- well, I should
`have done this earlier. Right. So this is -- in the -- this is in Patent Owner
`response at page 13. There is a discussion here where they say what you
`are saying they said, Your Honor, which is that Sheha describes itself as a
`wholesale replacement for AVL-based dispatcher systems like Fumarolo.
`The issue is Sheha doesn’t say that in those cited paragraphs or
`anywhere. The words obviously, “wholesale replacement,” don’t appear.
`What Sheha says, is that the functionality of mobile phones are
`useful in dispatch-type systems, including fleet tracking systems, that their
`expert acknowledges AVL-type systems are one of, and that the
`functionality that mobile devices bring to these types of vehicle or person
`location tracking systems, like dispatch systems that Sheha specifically talks
`about, that mobile phones add functionality.
`And so to the point of Fumarolo being written several years earlier,
`and as Mr. Williams explains, mobile devices become increasingly more
`prevalent over time, his point is that when you have communication units in
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`a system where their locations are being tracked like an AVL system, as
`Fumarolo discusses, then it makes sense that mobile devices -- mobile
`phones that have GPS tracking in them are an easy substitution for that
`tracking and add additional features.
`And so the argument that you would throw out all of the disclosures
`of Fumarolo, which sit atop just that AVL location tracking system, because
`you are now using mobile devices, doesn’t follow from the premise that
`they’re saying.
`The premise is an AVL system may be -- and Fumarolo kind of uses
`old technology, but since Fumarolo sits on top of that, that doesn’t say throw
`out Fumarolo.
`It says, use an upgraded second device, because mobile phones
`become more prevalent at that time, they have the functionality that the
`communication units of Fumarolo have for purposes of tracking and they
`add so much more.
`And so by the time you get to 2004, it makes sense to use mobile
`phones. And that is extensively discussed by Mr. Williams in several
`spots, for example, in paragraph 83 and other spots.
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`So the -- and specifically with respect to element 1.8, Mr. Williams
`also discusses the fact that if you have phones as the second device, it allows
`this pushing of map display information to the displays of the second
`devices, making Fumarolo more useful for the purposes that it was written.
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`And so you know, there’s a couple issues here. One, is it doesn’t --
`Sheha never says that it’s a wholesale replacement for AVL-based
`dispatcher systems. Doesn’t say that.
`To the extent you try to find something in what they’re saying that’s
`true, it is true that Sheha suggests that you would use mobile phones in place
`of the physical unit underlying the location tracking purpose for AVL
`systems, but that doesn’t mean you throw out everything in Fumarolo.
`That doesn’t follow. So that is our position with respect to this issue.
`And I think one reason why you can know that this issue of
`Fumarolo being an AVL system, and thus you should throw out Fumarolo,
`according to the terms of Sheha, is in the Patent Owner reply, Patent Owner
`appears to entirely switch positions and take the position that Fumarolo is, in
`fact, not an AVL system any longer.
`And so I’m not totally certain what the import of that argument is,
`but it certainly undermines the argument in the Petitioner’s -- in the -- I’m
`sorry, in the Patent Owner’s response.
`So they say that you can’t now -- and this is in the Patent Owner sur-
`reply, page 5 -- accordingly, any combination or motivation to combine
`based on Fumarolo being directed to an AVL system runs against the
`findings and opinions of its own technical expert.
`So they’re basically saying you can’t decide that Fumarolo is an
`AVL system anymore. And that was their whole basis why you couldn’t
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`combine Sheha and Fumarolo, is because Fumarolo is an AVL system, in
`the response.
`So I don’t want to belabor this. I find it confusing. The only thing
`I want to point out, and I apologize, Your Honor, is the cite that they say for
`this premise is this testimony.
`And I will read it, because it is not clear on this system, but the
`testimony on page 4 of the sur-reply that they used to say that Mr. Williams
`admitted that Fumarolo is not directed to an AVL system, what he, in fact,
`says -- I’ll just read it -- is, okay, and so the present invention --
`JUDGE JEFFERSON: Can you tell me what exhibit you’re
`reading from?
`MR. BERTA: Sorry. I apologize. It is Patent Owner’s sur-reply
`at page 4 at the bottom. There’s a quote and there’s highlighted -- what the
`quote is for this idea that Fumarolo isn’t directed to an AVL system, is,
`okay, and so the present invention in Fumarolo is not an AVL system, right?
`Answer, I think that’s a fair statement.
`But the question of what Fumarolo invented is absolutely not the
`same as what Fumarolo is directed to. And so I don’t think that that is a
`fair representation of what Mr. Williams said. It’s not an admission of
`anything.
`And in any event, if they’re right about that, it undermines their
`primary argument as to why you wouldn’t look to Sheha’s mobile phones by
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`2004 to substitute them in for the less capable communication units of
`Fumarolo.
`JUDGE TROCK: All right, Counsel. So we’re about halfway
`into your time.
`MR. BERTA: Yes.
`JUDGE TROCK: Let’s switch course here, and let’s go to the first
`device because that appears to be another one of the significant positions
`that Patent Owner is taking.
`MR. BERTA: Yes.
`JUDGE TROCK: They have several different arguments here as to
`why the Petitioner’s combination doesn’t disclose the claimed first device.
`Could you address Patent Owner’s argument with respect to that?
`MR. BERTA: Yes, sir. Thank you, Your Honor.
`Here’s the issue -- let me go through what actually the Petition says
`and what our position is. What the Petition discusses with respect to the --
`what the mapping is with respect to the first device, is the display terminal,
`okay, of Fumarolo; but it is the display terminal of Fumarolo which, as
`explained and as the Board pointed out in its institution, can also be remote
`and can be a remote mobile unit.
`And the issue is once the first device becomes a mobile remote unit
`that has wireless communications, as Fumarolo confirms that it does have
`expressly with respect to the 201 embodiment of the display terminal, then
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`that becomes naturally something that you can look to the functionality of
`Sheha on with respect to its mobile phones because we now have, in
`Fumarolo expressly, a mobile remote device that can communicate
`wirelessly.
`And so then, the -- I’m sorry, with the important piece of this being
`that it has a display.
`JUDGE TROCK: Well, isn’t one of the criticisms of the AVL
`system in Fumarolo is that this is one-way communication in that the
`communication units in the field aren’t able to communicate back to the
`dispatcher. The dispatcher can communicate with them, right? That’s
`one of the criticisms of Fumarolo’s system.
`But the question I have then is in this combination, why would the
`communication units in the field need to know where the dispatcher is?
`MR. BERTA: In the instance where the dispatch unit is, in fact,
`mobile, what Mr. Williams discusses is once -- once you recognize that
`Fumarolo does discuss the idea of a mobile dispatch unit, it then makes
`sense that its location could well be partnered to the other communication
`units for purposes of the coordinating that Fumarolo discusses.
`JUDGE TROCK: Is that part of your motivation to combine
`argument in the Petition? And if so, would you point to where that’s at?
`MR. BERTA: Right. So the answer to that is specifically not why
`there would be communications between the two. It doesn’t -- the Petition
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`doesn’t tie the communications between the two to the fact of it being
`mobile.
`What the Petition says is that the fact that it is a mobile device that
`has two-way wireless communications with a display means that you can
`look to Sheha’s two-way communication devices that are mobile and have
`the display for purposes of the functionality.
`So this is why it’s important that there’s no element exactly being
`charged -- challenged by Patent Owner with respect to the second argument
`because for what areas in which the functionality of the first device are at
`issue, the display -- pushing display information out, having a display that it
`can then give out to the second devices, the only place in which you’re
`specifically talking about two-way communications, to answer your
`question, between the second devices and the first device, is that Fumarolo
`generally discusses the idea that they communicate, has no specific protocol
`for that.
`And once you do that, then we are talking about adding the specifics
`of how one would communicate in 2004 --
`JUDGE TROCK: Well --
`MR. BERTA: -- which comes from Lazaridis.
`JUDGE TROCK: -- take a look at 1.4 though.
`1.4 has got transmitting IP-based messages, including the location of
`the first device to the second.
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`MR. BERTA: Yes.
`JUDGE TROCK: Why would they need to do that in Fumarolo?
`Why would the dispatcher need to tell the communication units where it’s
`at?
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`MR. BERTA: Right. And that is -- that is -- that specific point --
`those are the discussions of why -- once you are talking about having a
`mobile device in the field, one, he says, that it would make sense that -- and
`let me find that piece of the discussion.
`JUDGE ZADO: Well, if I could direct your attention --
`MR. BERTA: Yeah.
`JUDGE ZADO: -- to page 35 of the Petition, because this is where
`limitation 1.4 is discussed, and specifically the top of page 35, actually, this
`is where the Petition says that Fumarolo discloses that the display-based
`terminal may be a remote terminal.
`But then the Petition goes on to say it would have been obvious to a
`skilled artisan to incorporate two-way location transfer, including from a
`first device to the second device.
`And this is really the only description I see, or explanation, as to why
`a person would have wanted to send a dispatcher’s location information and
`push those out to the units that are out in the field.
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`And is there anything else in the record that you can direct us to
`that’s specific on this point of why we would want to push the dispatcher’s
`location out to units in the field?
`MR. BERTA: Sure. The paragraph immediately preceding it
`discusses this issue of the disclosures of Fumarolo and Sheha would have
`motivated a person of skill in the art to modify Fumarolo’s system to include
`the transfer of location information from a dispatcher using a display-based
`terminal to respective communication units, because Sheha says that one of
`the drawbacks of fixed locations is that you can’t -- it isn’t only one-way
`transfer. So Sheha specifically addresses this as a drawback.
`So it’s not Fumarolo that discusses sending the location information
`out from Fumarolo; it’s Sheha explaining that the additional functionality
`that you get from mobile phone-type devices make it then possible to do a
`two-way exchange of information.
`JUDGE TROCK: Is there any place else in the Petition where that
`argument is made?
`MR. BERTA: No. The only other thing that is discussed with
`respect to the Petition is that once you talk about the protocol for
`information transfer of Lazaridis, it then, you know, has with it going back
`and forth between the two telephone numbers and potential location
`information, it becomes capable by using the teachings of Lazaridis to
`exchange that information, among other types of information.
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`JUDGE TROCK: What about Williams, because Williams testified
`to that in his declaration.
`MR. BERTA: Well, Williams testifies to the fact that Lazaridis
`enables the transfer of location information.
`JUDGE TROCK: Correct, but not just Lazaridis, but we’re talking
`about this idea on the motivation to combine that you’re looking at Sheha for
`this concept for the first device having a display-based terminal, or the
`remote terminal, sending its location to the communication units in the field.
`JUDGE ZADO: For example --
`MR. BERTA: Yes. Sorry. Yes, is the answer. I’m sorry.
`JUDGE ZADO: Okay. Well, I’ll hear which paragraphs you’re
`looking at then. I’m looking at Williams as well, but I’ll first hear which
`paragraphs --
`MR. BERTA: I hope I guess correctly because 107 discusses this
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`issue.
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`JUDGE TROCK: Please don’t guess, Counsel.
`MR. BERTA: I’m guessing what’s in your mind, but what is, in
`fact, in Williams is -- in 107 Williams does discuss this motivation of
`combining the functionality of Sheha with Fumarolo because of the -- the
`display-based units can be remote.
`JUDGE ZADO: So I want to direct your attention to the last -- I
`think it’s the last sentence of paragraph 107 --
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`Case IPR2018-01080
`Patent 9,408,055 B2
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`MR. BERTA: Yes.
`JUDGE ZADO: -- that says, as I described in the overview section,
`two-way interoperability between a dispatcher and dispatched units became
`a critical feature in emergency incident systems after the events of 9/11. So
`it says “as I described” in the overview section, and the overview section is
`pretty long.
`Can you direct us to specific paragraphs in the overview section that
`specifically discuss two-way interoperability and why it was critical in
`emergency incident systems?
`MR. BERTA: I will say I don’t have that at hand. But since I’ve
`reserved time, I will direct you to it by the end of today’s proceeding, if that
`is okay. I apologize.
`JUDGE ZADO: Sure.
`MR. BERTA: Thank you. I obviously want to be responsive to
`the issues. I think I’ve not got an enormous amount of time left, but I want
`--
`
`JUDGE TROCK: One minute.
`MR. BERTA: Thank you. I do want to make the point that
`Fumarolo does discuss that the remote version of the display terminal is a
`two-way communication.
`JUDGE TROCK: So where --
`MR. BERTA: I understand what you’re saying about --
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`Case IPR2018-01080
`Patent 9,408,055 B2
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`JUDGE TROCK: Where is that in Fumarolo?
`MR. BERTA: Yeah. That is in Fumarolo in -- at 43 to 20 where
`it discusses that the mobile display unit can perform two-way
`communications slightly differently than the 101, but through the same
`wireless infrastructure.
`Very briefly on -- Lazaridis is the other one that’s sort of directed to
`the independent claim. Lazaridis discusses sending first an SMS message
`and then an IP-based message.
`I looked at the institution decision and you state exactly what
`Lazaridis says correctly. Patent Owner identifies a purported hole in that,
`that it doesn’t specifically say in Lazaridis that the return information from
`the second device uses the IP address in the first device to provide
`information.
`Because what Lazaridis says, is what you said it says, which is the
`first device gives out, in an SMS message, the IP address and then the
`second device communicates back to the first with more information than
`one could have. So there’s this theoretical idea that Lazaridis doesn’t say,
`well, the second communication, in fact, uses the IP address.
`The only point I want to make is that that’s not true because what
`Lazaridis says is -- in the particular paragraph, it says it communicates using
`the communication links 312. And communication links 312, according to
`Figure 3 -- and this is in Lazaridis -- the reference Lazaridis at Figure 3 --
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`Case IPR2018-01080
`Patent 9,408,055 B2
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`312 is the IP-address-to-IP-address communication, not the -- it’s not the
`SMS.
`
`So you do know that, in fact, it is an IP-based communication.
`Thank you, Your Honors.
`JUDGE TROCK: Before you go, one last question I have. Given
`the level of ordinary skill in the art that we’ve accepted for purposes of this
`proceeding, is it fair to say that someone of that level of skill would
`understand that one of the reasons we’re sending an IP address is that you’re
`going to further IP-based communications?
`MR. BERTA: Absolutely.
`JUDGE TROCK: Is that what you want us to understand?
`MR. BERTA: I believe that’s absolutely true and that is what Mr.
`Williams testifies to. But in addition, the disclosure Figure 3 shows IP
`address communications following -- that are not SMS communications.
`JUDGE TROCK: You were going to look up some Williams
`reference. Give us that one as well.
`MR. BERTA: I shall, Your Honor. Thank you for your time.
`JUDGE TROCK: Thank you.
`(Pause.)
`MR. RUBINO: Good morning, Your Honors.
`JUDGE TROCK: Good morning. Do you want to reserve any
`
`time?
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`Case IPR2018-01080
`Patent 9,408,055 B2
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`MR. RUBINO: Yes, Your Honors. Five minutes, please. May
`it please the Board. So there are two main issues with regard to the alleged
`combinations set forth in the Petition. I plan to go through it based on the
`second device first, and then go to the first device second, but it seems like
`more of the questions were directed to the first device and there was some
`follow-up that we’d like to jump into first. So I’m going to give you our
`presentation a little bit out of order, unless the Board has any more specific
`questions or would like to address something else.
`So with regard to the alleged first device, the combination for the
`first device in Fumarolo and Sheha alleges that you would take the mobile
`device -- I’m sorry, the wireless phone and put it into the terminal of
`Fumarolo. And now while that -- whether or not that was explicit in the
`Petition, it became apparent in the reply briefing where Petitioner actually
`stated that one of skill in the art would know to replace the computer
`terminal of Fumarolo with the wireless phone of Sheha.
`And so that was one of the issues that I think was brought up in the
`preliminary response. And at that stage, I believe the Board didn’t find that
`the first device had to be the mobile phone, the wireless phone, but
`Petitioner has taken the position and would reply, at least, that the wireless
`phone has to be substituted for the computer terminal of Fumarolo.
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`Patent 9,408,055 B2
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`JUDGE TROCK: Well, let me ask you this question, Counsel.
`Looking at Claim 1, does Claim 1 require the devices -- the first and second
`devices -- to be mobile?
`MR. RUBINO: Your Honor, there has to at least be
`communication of location information.
`JUDGE TROCK: Sure.
`MR. RUBINO: Additionally, the only thing described in the patent
`specification as devices --
`JUDGE TROCK: Let’s stick with the claim first.
`MR. RUBINO: So --
`JUDGE TROCK: Does the claim require the devices to be mobile
`or can they be stationary or fixed or placed in a building?
`MR. RUBINO: Your Honor, if it was placed in a building, there
`would be no reason to have location updates.
`JUDGE TROCK: That’s not what I asked you. I want you to
`look at the claim and then point me to specific language in the claim that
`requires these devices to be mobile or movable.
`MR. RUBINO: Your Honor, the specific language in the claim
`when read in context of the claim if we’re talking about construction, for
`example, of how you would construe --
`JUDGE TROCK: Let’s just stick with the claim right now. Can
`you find the word “mobile” in Claim 1?
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`Patent 9,408,055 B2
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`MR. RUBINO: Your Honor, the word “mobile” is not in Claim 1.
`JUDGE TROCK: Okay.
`MR. RUBINO: In terms of what one of ordinary skill --
`JUDGE ZADO: Well, to follow up with that, not just the word
`“mobile,” but language that says that it has to be -- that the first device is
`mobile or that any device is mobile, any language in the claim that indicates
`mobility?
`MR. RUBINO: Your Honor, that would come from the claim
`which requires updates to location information, transmitting location
`information. Which in the context of stationary devices which don’t move
`and can’t be mobile, would just be irrelevant and one of skill in the art
`reading the claim would understand that. That, in connection with one of
`skill in the art reading --
`JUDGE ZADO: Can you point to the specific updating language?
`(Pause.)
`MR. RUBINO: Receiving IP-based -- this is limitation 123 --
`receiving IP-based responses to the SMS messages wherein the IP-based
`responses to the SMS messages include location information of the
`respective second devices.
`JUDGE ZADO: I don’t see the word “updating,” I just see
`“location information,” correct? Do you agree with that?
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`Patent 9,408,055 B2
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`MR. RUBINO: There are plural responses. Additionally, in the
`limitation after that, there are plural responses -- there are plural messages
`transmitting IP-based messages, plural, and --
`JUDGE ZADO: But that’s not an update, that’s just sending your
`location information. You could be in a fixed location sending your
`location information to somebody else.
`JUDGE TROCK: Could therer also be multiple secondary devices?
`Let me point to Column 5, lines 4 through 6 of the ’055 patent. It says: A
`communication server acts as a forwarder for IP communications between
`any combination of cell phone/PDA users and/or PC-based user.
`Wouldn’t somebody of ordinary skill in the art reading that come to
`the conclusion that this entire system of first and second devices could be
`PC-based users?
`MR. RUBINO: Your Honor, that is -- that is a possibility.
`JUDGE TROCK: Thank you. You may proceed.
`MR. RUBINO: Thank you. With regard to the statements that were
`actually made in the reply and the arguments advanced, however, Patent
`Owner would still submit that Petitioner has taken the position that one of
`skill in the art to get to the combination that they allege invalidates this
`claim, would have to take the wireless phone of Sheha and replace the
`dispatcher of Fumarolo.
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`Case IPR2018-01080
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`And so that, again, was an issue that we had rai
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