Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 31
`Entered: December 2, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01080
`Patent 9,408,055 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`

`

`IPR2018-01080
`Patent 9,408,055 B2
`
`I. INTRODUCTION
`
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Google LLC (“Petitioner”) has shown, by a preponderance of the evidence,
`that claims 1, 2, 5–7, 14, 15, 17, 21–25, 27, 28, 30, 32–34, 36, 37, 40–43,
`45, 49, and 54 (the “challenged claims”) of U.S. Patent No. 9,408,055 B2
`(Ex. 1001, “the ’055 patent”) are unpatentable. See 35 U.S.C. § 316(e); 37
`C.F.R. § 42.1(d).
`
`A. Procedural History
`Petitioner filed a request for inter partes review of the challenged
`claims of the ’055 patent. Paper 2 (“Pet.”). AGIS Software Development,
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). Petitioner filed an authorized Reply to the Preliminary Response.
`Paper 8.
`On December 4, 2018, the Board entered a decision instituting an
`inter partes review of all claims and all grounds presented in the Petition.
`Paper 9 (“Inst. Dec.”).
`After institution, Patent Owner filed a Response to the Petition.
`Paper 15 (“PO Resp.”). Petitioner thereafter filed a Reply to Patent Owner’s
`Response. Paper 19 (“Reply”). Patent Owner filed a Sur-reply to
`Petitioner’s Reply. Paper 21 (“Sur-reply”). An oral hearing was held on
`Sept. 6, 2019. A transcript of the hearing is included in the record. Paper 29
`(“Tr.”).
`
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`IPR2018-01080
`Patent 9,408,055 B2
`B. Related Proceedings
`Petitioner advises that the ’055 patent has been asserted in several
`district court cases in the Eastern District of Texas, namely, AGIS Software
`Development LLC v. Huawei Device USA Inc., TXED-2-17-cv-00513, filed
`June 21, 2017; AGIS Software Development LLC v. HTC Corporation,
`TXED-2-17-cv- 00514, filed June 21, 2017; AGIS Software Development
`LLC v. LG Electronics, Inc., TXED-2-17-cv-00515, filed June 21, 2017;
`AGIS Software Development LLC v. Apple Inc., TXED-2-17-cv-00516, filed
`June 21, 2017; and AGIS Software Development LLC v. ZTE Corporation,
`TXED-2-17-cv-00517, filed June 21, 2017. Pet. 76.
`Patent Owner further advises that the ’055 patent and related patents
`are the subject of various filings requesting inter partes review. Paper 4, 2–
`3 (see table identifying inter partes review case numbers).
`
`C. The ’055 Patent
`The ’055 patent specification (the “Specification”) generally concerns
`rapidly establishing an ad hoc network of devices (e.g., smartphones, PDAs,
`or personal computers) with users, such as first responders, and logging onto
`a network using the network’s name and security key (a common
`“password” for everyone). Ex. 1001, Title, Abs, 10:55–57 (devices sign in
`with “the same ad hoc event name and password”). Once logged on, the
`users’ devices exchange each other’s location information via a remote
`server, and each participant’s location is displayed as a user-selectable
`symbol correctly positioned on an interactive display of a georeferenced
`map. Id. at 6:47–7:40; Fig. 1. Users may communicate or send data to
`another user by selecting the user’s symbol and the desired action. Id.
`Figure 1 of the ’055 patent is set out below.
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`IPR2018-01080
`Patent 9,408,055 B2
`
`
`Figure 1, shown above, depicts a user’s digital device 10 (cellular
`phone/PDA/GPS) having a touch screen 16 displaying a geographical map
`16b with georeferenced entities 30, 34. Id. at 5:21–42, 6:49–65.
`
`D. Challenged Claims
`Claims 1, 28, 41, and 54 are the independent challenged claims.
`Claims 1, 28, and 41 are substantially similar, but differ in that claim 1
`recites a method (Ex. 1001, 14:39–15:16), claim 28 recites a system (id.
`17:28–18:7), and claim 41 recites a device (id. 19:7–50). Claim 54 is
`substantially similar to claim 1, but recites an additional limitation of
`transmitting an IP-based text message to a second device via a cellular
`
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`IPR2018-01080
`Patent 9,408,055 B2
`network. Id. 20:49–21:29. Independent claims 1, 28, 41, and 54, set out
`below, are illustrative.
`1. [preamble] A method comprising:
` performing by a first device:
`
`28. [preamble] A system comprising:
`A first device programmed to perform operations
`comprising:
`
`41. [preamble] A non-transitory storage device
`having instructions stored thereon that, when
`executed by a first device, cause the first device to
`perform operations comprising:
`
`[1.1; 28.1; and 41.1] obtaining contact information
`of a plurality of second devices, wherein the contact
`information
`comprises
`respective
`telephone
`numbers of the second devices;
`[1.2; 28.2; and 41.12] facilitating initiation of
`Internet Protocol
`(IP) based communication
`between the first device and the respective second
`devices by using respective telephone numbers to
`send, from the first device to the second devices,
`respective Short Message Service (SMS) messages
`including a telephone number of the first device and
`information usable b the respective second device
`to send IP-based communication to the first device;
`[1.3; 28.3; and 41.3] receiving respective IP-based
`responses to the SMS messages, wherein the IP-
`based responses to the SMS messages include
`location information of the respective second
`devices;
`IP-based
`transmitting
`[1.4; 28.4; and 41.4]
`messages including a location of the first device to
`the respective second devices;
`[1.5; 28.5; and 41.5] presenting, via an interactive
`display of the first device, an interactive map and a
`
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`IPR2018-01080
`Patent 9,408,055 B2
`plurality of user selectable symbols corresponding
`to the plurality of second devices, wherein the
`symbols are positioned on the map at respective
`positions corresponding to the respective locations
`of the second devices;
`[1.6; 28.6; and 41.6] identifying user interaction
`with the interactive display selecting one or more of
`the user-selectable symbols corresponding to one or
`more of the second devices and user interaction with
`the display specifying an action and, based thereon,
`sending data to the one or more second devices;
`[1.7; 28.7; and 41.7] receiving user input via user
`interaction with the interactive display of the first
`device, the user input specifying a location and a
`symbol corresponding to an entity other than the
`first device and the second devices; and
`[1.8; 28.8; and 41.8] based on the user input, adding
`the user-specified symbol to the interactive display
`at a position on the interactive map corresponding
`to the user-specified location, and transmitting the
`user-specified symbol and location to the second
`devices for addition of the user-specified symbol to
`respective interactive displays of the second devices
`at respective positions on respective interactive
`maps corresponding to the user-specified location.
`54. [preamble] A method comprising:
`performing by a first device:
`[54.1] obtaining contact information of a plurality
`of second devices, wherein the contact information
`comprises respective telephone numbers of the
`second devices;
`[54.2] facilitating initiation of Internet Protocol (IP)
`based communication between the first device and
`the respective second devices by using
`the
`respective telephone numbers to send, to the second
`devices, respective Short Message Service (SMS)
`messages including a telephone number of the first
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`IPR2018-01080
`Patent 9,408,055 B2
`device and information usable by the respective
`second device to send IP-based communication to
`the first device;
`[54.3] receiving respective IP-based responses to
`the SMS messages, wherein the IP-based responses
`to the SMS messages include location information
`of the respective second devices;
`[54.4] transmitting IP-based messages including a
`location of the first device to the respective second
`devices;
`[54.5] transmitting an IP-based text message to at
`least one of the second devices via a cellular
`communications network;
`[54.6] presenting, via an interactive display of the
`first device, an interactive map and a plurality of
`user selectable symbols corresponding to the
`plurality of second devices, wherein the symbols are
`positioned on the map at respective positions
`corresponding to the respective locations of the
`second devices;
`the
`interaction with
`[54.7]
`identifying user
`interactive display selecting one or more of the user-
`selectable symbols corresponding to one or more of
`the second devices and user interaction with the
`display specifying an action and, based thereon,
`sending data to the one or more second devices;
`[54.8] receiving user input via user interaction with
`the interactive display of the first device, the user
`input specifying a
`location and a symbol
`corresponding to an entity other than the first device
`and the second devices; and
`[54.9] based on the user input, adding the user-
`specified symbol to the interactive display at a
`position on the interactive map corresponding to the
`user-specified location, and transmitting the user-
`specified symbol and location to the second devices
`for addition of the user-specified symbol to
`
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`IPR2018-01080
`Patent 9,408,055 B2
`respective interactive displays of the second devices
`at respective positions on respective interactive
`maps corresponding to the user-specified location.
`Ex. 1001, 14:38–15:16, 17:28–18:7, 19:7–50, 20:49–21:29 (numbers and
`brackets added).1
`E. Relevant References
`Petitioner relies upon the following references that are pertinent to our
`analysis:
`(1) U.S. Patent No. 6,366,782 B1, issued Apr. 2, 2002 (“Fumarolo”)
`(Ex. 1005);
`(2) U.S. Patent Application No. 2004/0054428 A1, published Mar. 18,
`2004 (“Sheha”) (Ex. 1006);
`(3) U.S. Patent Application No. 2004/0157590 A1, published Aug. 12,
`2004 (“Lazaridis”) (Ex. 1007);
`(4) U.S. Patent Application No. 2005/0221876 A1, published Oct. 6,
`2005 (“Van Bosch”) (Ex. 1008); and
`(5) U.S. Patent Application No. 2002/0027901 A1, published Mar. 7,
`2002 (“Liu”) (Ex. 1009);
`
`
`
`1 The Petition appears to misnumber the sequence of claim 1’s limitations,
`apparently skipping the number 1.7. See Pet. 38–45. We correct the
`numbering here for our analysis, which is consistent with our numbering in
`the Institution Decision. See Inst. Dec. 4–6.
`
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`IPR2018-01080
`Patent 9,408,055 B2
`F. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 over the asserted prior art. Pet. 20. In particular, Petitioner
`asserts the following grounds. Id.
`
`Claim(s) Challenged
`1–2, 5–7, 14–15, 17,
`21–25, 28, 30, 32–34,
`36, 40–43, 45, 49, 54
`27
`
`37
`
`
`
`35 U.S.C. §
`103
`
`103
`
`103
`
`References
`Fumarolo, Sheha,
`Lazaridis
`
`Fumarolo, Sheha,
`Lazaridis, Liu
`Fumarolo, Sheha,
`Lazaridis, Van Bosch
`
`II. DISCUSSION
`
`A. Level of Ordinary Skill
`In determining whether an invention would have been obvious, we
`consider the level of ordinary skill in the pertinent art at the time of the
`invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “The
`importance of resolving the level of ordinary skill in the art lies in the
`necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg.
`Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner asserts that a person of ordinary skill in the art in the field
`of the ’055 patent
`would have had either: (1) a Bachelor of Science
`degree in Electrical Engineering or an equivalent
`field, with three to five years of academic or
`industry experience in the wireless/mobile location
`industry or comparable industry experience; or (2)
`a Master of Science degree
`in Electrical
`Engineering or an equivalent field, with two to four
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`IPR2018-01080
`Patent 9,408,055 B2
`years of academic or industry experience in the
`same field.
`Pet. 20 (citing Ex. 1003 ¶ 26).
`Patent Owner asserts that a person of ordinary skill in the art at the
`time of the invention would have at least a bachelor’s degree in computer
`science, computer engineering, or equivalent with one to two years of
`experience in the field of computer programming with a focus on building
`systems such as GPS-based localization and network transmission. PO
`Resp. 7. Patent Owner further asserts that extensive experience and
`technical training might substitute for educational requirements, while
`advanced degrees might substitute for experience. Id. (citing Ex. 200[7] 2
`¶¶ 18–20).
`The parties agree that an ordinarily skilled artisan in the field of the
`’055 patent would have a bachelor’s degree in a pertinent technical field, and
`a few years of experience and/or more advanced education in the field.
`Therefore, we determine a person of ordinary skill in the art would have a
`bachelor’s degree in electrical engineering, computer science, computer
`engineering, or equivalent, and two to four years of additional experience,
`either work or educational, in the field of electrical communications. We do
`not adopt Patent Owner’s assessment that a skilled artisan would have
`focused on building systems such as GPS-based localization and network
`
`
`2 Throughout the Patent Owner Response, Patent Owner cites to Ex. 2009
`repeatedly in support of its arguments. See, e.g., PO Resp. 29–31. Exhibit
`2009, however, is the deposition transcript of Mr. Williams, which does not
`contain any paragraph (¶) designations. We presume, therefore, that Patent
`Owner has cited mistakenly to Exhibit 2009 when it uses such paragraph
`designations, where it meant to cite to Exhibit 2007, which is the Carbonell
`declaration.
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`transmission. Patent Owner does not explain how this is pertinent to the
`field of the ’055 patent, which relates to establishing ad hoc digital and voice
`networks with communication devices (e.g., smartphones, PDAs) with users,
`such as first responders. See, e.g., Ex. 1001, (57).
`We note that the level of skill in the art also may be reflected in the
`prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579
`F.2d 86, 91 (CCPA 1978).
`
`B. Claim Construction
`In an inter partes review such as this one, filed before November 13,
`2018, claim terms in an unexpired patent are given their broadest reasonable
`construction in light of the specification of the patent. 37 C.F.R. § 42.100(b)
`(2017); see also Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R.
`§ 42.100(b) effective November 13, 2018). Consistent with that standard,
`we assign claim terms their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art at the time of the invention, in
`the context of the entire patent disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in
`controversy need be construed, and only to the extent necessary to resolve
`the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`Here, Petitioner asserts that “no claim terms require construction.”
`Pet. 19. Petitioner also asserts that, “each term should be given its plain and
`ordinary meaning.” Id. Patent Owner “agrees that the claim terms should be
`given their ‘broadest reasonable construction’ consistent with the
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`IPR2018-01080
`Patent 9,408,055 B2
`specification,” and that the “words of the claim must be given their plain
`meaning unless such meaning is inconsistent with the specification and
`prosecution history.” PO Resp. 9. Patent Owner also notes that the District
`Court in a related proceeding, AGIS Software Development LLC v. Huawei
`Device USA Inc., et al., No. 2:2017-cv-00513 (E.D. Tex.), has entered a
`claim construction order, “adopting the constructions presented in Exhibit
`2010.” Id. 3 Patent Owner requests, “for the purposes of consistency across
`proceedings and to the extent any terms require construction, the Board
`should exercise its discretion to adopt the same constructions set forth in the
`District Court proceedings.” Id.
`The parties agree that the words of the claims should be given their
`plain meaning unless that meaning is inconsistent with the specification and
`the prosecution history. Moreover, the parties do not dispute any particular
`claim terms nor do they proffer or argue any particular claim construction.
`Indeed, Petitioner contends, “no terms require construction,” because “an
`express construction is not necessary to resolve the unpatentability issues
`
`
`3 Exhibit 2010, cited by Patent Owner, is not a district court claim
`construction order, nor does it appear related to claim construction. See Ex.
`2010 (printout of a Motorola product webpage). We have reviewed both
`parties’ exhibit lists, as well as the exhibits submitted by the parties in this
`proceeding, but we are unable to locate a claim construction order entered by
`the District Court. Nonetheless, we have obtained, through the Public
`Access to Court Electronic Records (PACER), a Claim Construction
`Memorandum and Order, dated October 10, 2018, in AGIS Software
`Development LLC v. Huawei Device USA Inc., et al., No. 2:17-cv-513, at
`Docket No. 205 (“Claim Construction Order”), which we enter into the
`record as Exhibit 3001 along with this Decision. See Ex. 3001. We note
`that this Claim Construction Order appears to be the same order entered on
`November 20, 2018 by the Panel in a related case, IPR2018-01079, as Ex.
`3001.
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`IPR2018-01080
`Patent 9,408,055 B2
`here.” Pet. 19. Patent Owner only requests that “to the extent any terms
`require construction, the Board should exercise its discretion to adopt the
`same constructions set forth in the District Court proceedings.” PO Resp. 9.
`We have considered the District Court’s Claim Construction Order, but for
`purposes of this Decision, and upon review of the record in this proceeding,
`we do not find it necessary to construe expressly any particular claim terms
`to resolve the patentability issues before us.
`
`C. Fumarolo (Ex. 1005)
`Fumarolo describes a dispatch system with a display-based terminal,
`such as a CAD (Computer Aided Dispatch) terminal, having an integrated
`mapping program to communicate directly with communication units from a
`single map environment. Ex. 1005, Abs., 1:18–22, 2:52–56. Fumarolo
`explains that when such a system receives incident information from a 911
`system that is coupled to the CAD system, a dispatcher “can quickly
`determine which communication unit users (e.g., policemen, firemen,
`paramedics, and so forth) would be in the best situation to respond to the
`incident.” Id. at 1:43–45. Fumarolo further explains the locations of the
`communication units are typically provided to the CAD system on a periodic
`basis by an automatic vehicle location (AVL) system that is coupled to the
`CAD system via a dedicated communication link.
`Figure 1 of Fumarolo is shown below.
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`
`
`Figure 1, shown above, depicts Fumarolo’s communication system
`that includes a display based terminal 101 in communication 116 with a
`wireless infrastructure 103 through an interface 129. See Ex. 1005, 4:23–38.
`The wireless infrastructure 103 permits communication 114 with a plurality
`of mobile wireless units 105–113. Id. at 4:6–22. Fumarolo explains that
`terminal 101’s processor 121 “receives location coordinates of the
`communication units 105–113 on a periodic basis from the AVL system
`115, from the communication units 105–113 themselves, or from the
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`IPR2018-01080
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`wireless infrastructure 103 in accordance with known techniques.” Id. at
`8:37–43. Processor 121 then instructs GUI 119 to “display the locations of
`the communication units 105–113 on the map . . . or a pulldown menu
`identifying the types of communications and/or the modes of transmission
`supported by the system 100.” Id. at 43–48. Terminal 101 displays a map to
`the user indicating locations of communication units in at least a portion of
`the communication system. Id. at 3:23–26. Terminal 101 then “receives a
`selection from the map [from the user] . . . of at least one communication
`unit and an indication of the user’s desire to communicate with the selected
`communication unit or units.” Id. at 3:26–31. Based on the selection,
`terminal 101 may communicate with the communication units via
`“individual or private communication,” “group communication,” “voice
`communication,” “data communication,” or some combination thereof. Id.
`at 5:53–60.
`
`D. Sheha (Ex. 1006)
`Sheha is directed to a method and apparatus for sending and retrieving
`location relevant information to a user by selecting and designating a point
`of interest that is displayed on a graphical user interface and sending the
`location information associated with that point of interest to a receiver that is
`also selected using the graphical user interface. Ex. 1006, Abs. Sheha
`explains that “providing a solution enabling users to graphically send,
`request, and plan, in real-time, location-relevant information between users
`and devices would prove especially useful for wireless devices that
`incorporate positioning technologies, such as Global Positioning Satellite
`(GPS) devices,” typically used in industrial applications such as Automatic
`Vehicle Location (AVL) or Feet Tracking. Id. ¶¶ 7, 18. Sheha also explains
`the “invention allows users to send map identifiers using the real-time
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`communication system . . . to other users in their roster list or, in an ad-hoc
`manner, to other users identified by a unique identifier, such as an e-mail
`address, telephone number, or the like.” Id. ¶ 99. Sheha explains that the
`invention “may be practiced by using communication devices such as a
`personal computer, a personal digital assistance, in-vehicle navigation
`systems, or a mobile telephone.” Id. at Abs.
`
`E. Lazaridis (Ex. 1007)
`Lazaridis describes a system “for allowing mobile stations to
`exchange identification information using a predetermined communication
`path for the purpose of obtaining identification information to use in
`establishing a different communication path for communicating.” Ex. 1007,
`Abs.
`Figure 3 of Lazaridis, shown below, depicts such a system.
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`
`
`Figure 3 of Lazaridis, shown above, is a block diagram of a system for
`exchanging mobile station identification information through an SMS
`service. Id. ¶ 11. As Lazaridis explains, the current IP address of the first
`mobile station 300 is sent in an SMS message 310, which is addressed to the
`second mobile station 301. Id. ¶ 31. Once the second mobile station 301
`has received an SMS message 310 containing identification information for
`the first mobile station 300, the current IP address associated with the first
`mobile station 300 is known to the second mobile station 301, which can
`send data to the first mobile station 300. Id.
`
`F. Van Bosch (Ex. 1008)
`Van Bosch is directed to a system and procedure for posting and
`receiving location based messages in a wireless communication based
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`network. Ex. 1008, Abs. In Van Bosch, the system allows messages to be
`posted to specified users and to be associated with a particular location for
`which the message is pertinent. Id. Van Bosch explains that the messages
`can be textual, audio, video, or pictorial messages and may be superimposed
`on computerized maps to make association between the message and the
`location more meaningful. Id.
`
`G. Liu (Ex. 1009)
`Liu is directed to anonymous voice communications between devices
`over a network. Ex. 1009, Abs, Fig. 1. Liu explains that the network may
`be a packet-switched network, such as the Internet, supporting Voice over
`Internet Protocol (VoIP). Id. ¶ 62. Liu further explains that the devices can
`be variously implemented as desktop or laptop personal computers, as
`Internet appliances, and as PDAs or other handheld devices (e.g., smart
`phones with Internet accessibility). Id. ¶ 54.
`
`H. Principles of Law on Obviousness
`35 U.S.C § 103 forbids issuance of a patent if “the differences
`between the claimed invention and the prior art are such that the claimed
`invention as a whole would have been obvious before the effective filing
`date of the claimed invention to a person having ordinary skill in the art to
`which the claimed invention pertains.” In Graham, the Court set out a
`framework for analyzing patentability under § 103, by considering the scope
`and content of the prior art; differences between the prior art and the claims
`at issue; and the level of ordinary skill in the pertinent art.
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination
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`of prior art elements would have been obvious is determined by whether the
`improvement is more than the predictable use of prior art elements according
`to their established functions. Id. at 417. Reaching this conclusion,
`however, requires more than a mere showing that the prior art includes
`separate references covering each separate limitation in a claim under
`examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
`Cir. 2011). Rather, obviousness requires the additional showing that a
`person of ordinary skill at the time of the invention would have selected and
`combined those prior art elements in the normal course of research and
`development to yield the claimed invention. Id.
`
`I. Obviousness over Fumarolo, Sheha, and Lazaridis
`Petitioner contends claims 1, 2, 5, 6, 7, 14, 15, 17, 21–25, 28, 30, 32–
`34, 36, 40–43, 45, 49, and 54 are obvious under 35 U.S.C. § 103 over the
`combined teachings of Fumarolo, Sheha, and Lazaridis. Pet. 20, 22–70.
`1. Analysis of Independent Claims
`As noted above, independent claims 1, 28, 41, and 54 are substantially
`similar. Petitioner provides identical arguments for claims 1, 28, and 41,
`explaining “[a]fter the preambles, these claims recite the exact same features
`using the exact same language.” Pet. 22, id. at 23–46. For claim 54,
`Petitioner relies on its arguments for claim 1, asserting, “claim 54 is much
`like independent claim 1,” except that Petitioner also addresses one
`additional feature not present in the other independent claims. Id. at 46–48.
`Similarly, Patent Owner’s arguments for claims 1, 28, and 41 are identical.
`PO Resp. 11–36. Patent Owner does not provide arguments specific to
`claim 54. See generally PO Resp. Accordingly, we address the limitations
`of claim 1 below, but our consideration of exemplary claim 1’s limitations
`applies to the corresponding limitations of claims 28, 41, and 54. We also
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`address the additional limitation in claim 54, which relates to transmitting an
`IP-based text message to a second device via a cellular network.
`Patent Owner argues Petitioner has not shown: (1) Fumarolo teaches a
`“first device,” (2) Fumarolo, in combination with Sheha or Lazaridis,
`teaches a “first device,” (3) the combination of Fumarolo, Sheha, and
`Lazaridis teaches limitation 1.3; and (4) the combination of Fumarolo and
`Sheha teaches limitation 1.8. PO Resp. 11–34.
`[preamble] A method comprising: performing
`by a first device: (see also preamble of claims
`28, 41, and 54)4
`Petitioner argues Fumarolo’s disclosure of a display-based terminal
`reads on the “first device,” as recited in the preamble. Pet. 22–23 (citing
`Ex. 1005, 1:9–13). Petitioner further asserts, “Sheha and Lazaridis also
`disclose the use of mobile devices that read on the preamble’s recitation of
`‘first device.’” Id. at 23.5,6
`
`
`4 Petitioner contends the “first device” language in the independent claims is
`part of the preamble. Pet. 22. Patent Owner does not dispute Petitioner’s
`contention that the “first device” language is part of the preamble. See
`generally PO Resp. Neither party expressly contends whether, nor explains
`why, this language should or should not be given patentable weight.
`However, both parties’ arguments assume the claims require a “first device,”
`and our analysis proceeds on that assumption.
`5 In the discussion of claim 1’s preamble, Petitioner does not identify what it
`contends in Sheha and Lazaridis maps to the claimed “first device,” or
`provide any explanation regarding how Sheha and Lazaridis disclose a “first
`device.” Pet. 23. Accordingly, our ultimate finding in favor of Petitioner
`does not depend on Petitioner’s contention, with regard to claim 1’s
`preamble, that Sheha and Lazaridis disclose a “first device.”
`6 Because claim 1 recites a first device performing limitations 1.1 through
`1.8, Petitioner contends Fumarolo teaches the display-based terminal, alone
`or in combination with other art, performs the steps recited in limitations 1.1
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`In particular, Petitioner relies on Fumarolo’s “display-based terminal”
`for disclosure of the “first device.” Pet. 22 (“Fumarolo discloses a display-
`based terminal that reads on the “‘first device.’”). Petitioner specifically
`identifies Fumarolo’s Field of the Invention, which discloses, “[t]he present
`invention relates generally to communication systems, and in particular, to a
`communication system that employs a method and apparatus for allowing a
`user of a display-based terminal to communicate with communication units
`in the communication system.” Id. at 22–23 (citing Ex. 1005, 1:9–13)
`(emphasis added). Petitioner further explains Fumarolo discloses that “this”
`display-based terminal (i.e., the display-based terminal disclosed in the Field
`of the Invention) can be implemented as “a remote terminal.” Id. at 23
`(citing Ex. 1005, 4:66–5:21); see also Fig. 2 (block diagram illustrating an
`embodiment including a remote terminal).
`In the discussion of the preamble, Petitioner does not explain the
`relevance of Fumarolo’s “remote terminal” to the claimed “first device.” Id.
`at 23. However, with regard to limitations 1.1, 1.2, 1.5, and 1.6, Petitioner
`argues the Petition relies on Fumarolo’s description of a display-based
`terminal, and references Fumarolo’s remote terminal in the context of
`incorporating Sheha’s and Lazaridis’ communication features into
`Fumarolo. Reply 7 (citing Pet. 23–24, 26–30, 35–38, and 38–39).
`Discussed in further detail below, Fumarolo teaches at least two
`embodiments, one shown in Figure 1 and an alternative shown in Figure 2.
`Ex. 1005, 2:59–64, Fig. 1, Fig. 2.
`With regard to Figure 1, Fumarolo explains, “[t]he communication
`system 100 includes a display-based terminal 101, a wireless infrastructure
`
`
`through 1.8. Pet. 23–46.
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`103, and a plurality of communication units 105-113 that communicate with
`the wireless infrastructure 103 over one or more communication resources
`114.” See Ex. 1005, 3:61–65. Figure 1 of Fumarolo is shown below.
`
`Figure 1 of Fumarolo, shown above, depicts the components of
`Fumarolo’s communication system. Ex. 1005, 3:59–65. Petitioner points
`out that Fumarolo’s display-based terminal displays “a map to the terminal
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`user indicating locations of communication units in at leas