Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 54
`Entered: October 15, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00733
`Patent 7,036,128 B1
`____________
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 54
`Entered: October 15, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00733
`Patent 7,036,128 B1
`____________
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2019-00733
`Patent 7,036,128 B1
`
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`
`
`Google LLC (“Petitioner”)1 filed a Petition requesting inter partes
`
`review of U.S. Patent No. 7,036,128 B1 (“the ’128 patent,” Ex. 1001).
`
`Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–12,
`
`20, and 21 of the ’128 patent. We instituted an inter partes review of all
`
`challenged claims on all proposed grounds of unpatentability. Paper 13, 38.
`
`IPA Technologies, Inc. (“Patent Owner”)2 filed a Response to the Petition.
`
`Paper 36 (“PO Resp.”). Petitioner filed a Reply (Paper 46, “Pet. Reply”) and
`
`Patent Owner filed a Sur-reply (Paper 50, “PO Sur-reply”). An oral hearing
`
`was held on June 4, 2020, and a transcript of the hearing is included in the
`
`record. Paper 53 (“Tr.”).
`
`
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`
`For the reasons discussed below, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–12, 20, and 21 of the
`
`’128 patent are unpatentable.
`
`B. Related Proceedings
`
`
`
`One or both parties identify, as matters involving or related to the
`
`’128 patent, IPA Technologies Inc. v. Google LLC, No. 1:18-cv-00318
`
`(D. Del. Feb. 26, 2018); IPA Technologies Inc. v. Microsoft Corp., No. 1:18-
`
`cv-00001 (D. Del. Jan. 2, 2018); IPA Technologies Inc. v. Amazon.com, Inc.
`
`
`
`1 Petitioner identifies Google LLC as the real party-in-interest. Pet. 2.
`2 Patent Owner identifies as the real party-in-interest “Patent Owner, IPA
`Technologies Inc., which is a wholly owned subsidiary of Wi-LAN
`Technologies Inc. . . . , which is a wholly owned subsidiary of Wi-LAN
`Inc. . . . , which is a wholly owned subsidiary of Quarterhill Inc.” Paper 4,
`2; Paper 12, 2.
`
`2
`
`
`
`IPR2019-00733
`Patent 7,036,128 B1
`
`et al., No. 1:16-cv-01266 (D. Del. Dec. 19, 2016); and Patent Trial and
`
`Appeal Board cases Google LLC v. IPA Technologies Inc., IPR2019-00734,
`
`IPR2019-00735, and IPR2019-00736, and Microsoft Corporation v. IPA
`
`Technologies Inc., IPR2019-00838, IPR2019-00839, and IPR2019-00840.
`
`Pet. 2; Paper 4, 2; Paper 12, 2.
`
`C. The ’128 Patent
`
`
`
`The ’128 patent is titled “Using a Community of Distributed
`
`Electronic Agents to Support a Highly Mobile, Ambient Computing
`
`Environment” and describes “software-based architectures for
`
`communication and cooperation among distributed electronic agents to
`
`incorporate elements such as GPS or positioning agents and speech
`
`recognition into a highly mobile computing environment.” Ex. 1001,
`
`code (54), 1:23–27. Figure 4 of the ’128 patent is reproduced below.
`
`Figure 4 depicts the structure of an exemplary distributed agent system of
`
`the ’128 patent. Id. at 6:47–52. Figure 4 shows that system 400 includes
`
`
`
`3
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`
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`IPR2019-00733
`Patent 7,036,128 B1
`
`facilitator agent 402, user interface agents 408, application agents 404, and
`
`meta-agents 406. Id. The ’128 patent explains that system 400 is organized
`
`“as a community of peers by their common relationship” to facilitator
`
`agent 402 (id. at 6:50–52), which is “a specialized server agent that is
`
`responsible for coordinating agent communications and cooperative
`
`problem-solving” (id. at 6:54–57).
`
`
`
`The ’128 patent discloses that cooperation among agents is structured
`
`around a three-part approach as follows: (1) providers of services register
`
`their capabilities specifications with a facilitator; (2) requesters of services
`
`construct goals and relay them to a facilitator; and (3) the facilitator
`
`coordinates the efforts of the appropriate service providers in satisfying
`
`these goals. Id. at 10:65–11:6. Such cooperation among agents is achieved
`
`via messages expressed in a common language, called the Interagent
`
`Communication Language (“ICL”). Id. at 10:66–11:1, 7–13.
`
`
`
`Referencing Figures 3 and 4, the ’128 patent describes a preferred
`
`embodiment for the operation of a distributed agent system. Id. at 7:34–60.
`
`The ’128 patent describes that, when invoked, a client agent makes a
`
`connection to a facilitator and registers with the facilitator a specification of
`
`the capabilities and services it can provide. Id. For example, a natural
`
`language agent may register the characteristics of its available natural
`
`language vocabulary. Id. When facilitator agent 402 receives a service
`
`request and determines that registered services 416 of one of its client agents
`
`will help satisfy a goal of the request, the facilitator sends that client a
`
`request expressed in ICL 418. Id. at 7:46–55. The client agent parses this
`
`request, processes it, and returns answers or status reports to the facilitator.
`
`Id.
`
`4
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`IPR2019-00733
`Patent 7,036,128 B1
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`
`
`Referencing Figures 5 and 6, the ’128 patent describes an exemplary
`
`embodiment where user interface agent 408 runs on a user’s laptop, accepts
`
`user input, sends requests to facilitator agent 402 for delegation to
`
`appropriate agents, and displays the results of the distributed computation.
`
`Id. at 8:7–24. The ’128 patent illustrates that, when the question “What is
`
`my schedule?” is entered on user interface (UI) 408, UI 408 sends the
`
`request to facilitator agent 402, which in turn asks natural language (NL)
`
`agent 426 to translate the query into ICL. Id. at 8:25–37. The translated
`
`ICL expression is then routed by facilitator agent 402 to appropriate agents,
`
`e.g., calendar agent 434, to execute the request. Id. Finally, results are sent
`
`back to UI agent 408 for display. Id.
`
`
`
`The ’128 patent also describes an embodiment directed to mobile
`
`users, such as those in a car. Id. at 30:23–54. According to the ’128 patent,
`
`“the present invention enables intelligent collaboration among agents
`
`including user interface agents for providing an ambient interface well suited
`
`for the mobile environment . . . , as well as location-aware agents providing
`
`current positional information through technologies such as Global
`
`Positioning System (‘GPS’).” Id. at 30:37–43. The ’128 patent explains
`
`that “[n]ew technology such as Global Positioning System (GPS), wireless
`
`phones, wireless internet, and electronic controls are currently available in
`
`cars to improve the way people drive and manage the time spent in
`
`automobiles.” Id. at 30:47–50. The ’128 patent states that the disclosed
`
`invention “manages this heavy flow of data and keeps the cognitive load as
`
`low as possible for the driver” by providing a speech-enabled touchscreen
`
`device. Id. at 30:50–54.
`
`5
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`IPR2019-00733
`Patent 7,036,128 B1
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`
`D. Illustrative Claim
`
`
`
`Of the challenged claims of the ’128 patent, only claim 1 is an
`
`independent claim. The remaining challenged claims depend directly or
`
`indirectly from claim 1. Claim 1, reproduced below with emphasis added
`
`and bracketed annotations3 inserted, is illustrative.
`
`1.[pre] A collaborative computer-implemented community of
`distributed electronic agents, organized to provide a mobile
`computing environment, the computer-implemented community
`of distributed electronic agents comprising:
`
`[1.a] an agent registry wherein one or more capabilities
`of each of the electronic agents are registered in the form of an
`interagent communication language (ICL), [1.b] wherein the
`interagent language includes a layer of conversational protocol
`defined by event types and parameter lists associated with one
`or more events, and [1.c] wherein the parameter lists further
`refine the one or more events;
`
`[1.d] a facilitator agent arranged to coordinate
`cooperative task completion among the electronic agents by
`delegating one or more received ICL goals to a selected one or
`more of the electronic agents based upon the registered
`capabilities of the selected agents;
`
`[1.e] one or more service-providing electronic agents,
`being in bi-directional communication with the facilitator agent,
`including at least one location agent operable to ascertain a
`current physical location of a user; and
`
`[1.f] one or more computer interface agents being in
`bi-directional communication with the facilitator agent, the
`mobile computer interface agents being operable to process at
`least one mobile user input type and to responsively generate
`and present to the facilitator agent one or more ICL goals
`corresponding to the user’s desired request.
`
`Ex. 1001, 35:27–53 (emphasis added).
`
`
`
`3 We utilize Petitioner’s annotations for claim 1 but have retained the
`paragraph formatting from the issued patent.
`
`6
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`IPR2019-00733
`Patent 7,036,128 B1
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`
`
`
`Petitioner relies on the following references:
`
`E. Evidence
`
`Reference
`
`David L. Martin, Adam J. Cheyer, and Douglas B. Moran,
`Building Distributed Software Systems with the Open Agent
`Architecture, PROCEEDINGS OF THE THIRD INTERNATIONAL
`CONFERENCE ON THE PRACTICAL APPLICATION OF
`INTELLIGENT AGENTS AND MULTI-AGENT TECHNOLOGY 355
`(1998) (“Martin”)4
`
`US 5,528,248; filed Aug. 19, 1994; issued June 18, 1996
`(“Steiner”)
`
`US 5,608,635; filed Nov. 17, 1994; issued Mar. 4, 1997
`(“Tamai”)
`
`US 5,835,881; filed Jan. 16, 1996; issued Nov. 10, 1998
`(“Trovato”)
`
`WO 93/05492; filed Aug. 28, 1992; published Mar. 18, 1993
`(“Anagnostopoulos”)
`
`US 6,009,355; filed Jan. 28, 1997; issued Dec. 28, 1999
`(“Obradovich”)
`
`Exhibit No.
`
`1011
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`
`
`4 Prior to institution, Patent Owner argued that the pertinent portions of the
`Martin reference (listing as authors Martin, Cheyer, and Moran) and the
`’128 patent (naming as inventors Julia and Cheyer) are the work of a
`common inventive entity and therefore cannot be used as prior art. See, e.g.,
`Paper 6 (Prelim. Resp.), 41 (section heading: “Martin . . . is Not the Work
`of Another”); id. at 47 (“Martin represents the work of joint-inventor Cheyer
`and should not be considered as a ¶ 102(a) reference.”); Paper 10 (Patent
`Owner’s pre-institution sur-reply), 1. Patent Owner does not raise that
`argument in its Patent Owner Response and has waived the issue. See
`Paper 31, 8 (Scheduling Order; “Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.”); Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(November 2019) 52 (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed.
`Cir. 2016)).
`
`7
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`
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`IPR2019-00733
`Patent 7,036,128 B1
`
`
`Reference
`
`US 5,434,907; filed Mar. 13, 1992; issued July 18, 1995
`(“Hurst”)
`
`Exhibit No.
`
`1033
`
`
`
`Petitioner also relies on the Declaration of Dr. Dan R. Olsen, Jr.
`
`(Ex. 1002) in support of its arguments. The parties rely on other exhibits as
`
`discussed below.
`
`F. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`
`Claim(s) Challenged 35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 2, 5, 20, 21
`
`103(a)
`
`Martin, Steiner
`
`3
`
`4
`
`6
`
`7–11
`
`12
`
`103(a)
`
`Martin, Steiner, Tamai
`
`103(a)
`
`Martin, Steiner, Trovato
`
`103(a)
`
`Martin, Steiner, Anagnostopoulos,
`Tamai
`
`103(a)
`
`Martin, Steiner, Obradovich
`
`103(a)
`
`Martin, Steiner, Obradovich, Hurst
`
`II. ANALYSIS
`
`A. Principles of Law
`
`
`
`Petitioner bears the burden of persuasion to prove unpatentability of
`
`the claims challenged in the Petition, and that burden never shifts to Patent
`
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`
`1378 (Fed. Cir. 2015). To prevail, Petitioner must establish by a
`
`preponderance of the evidence that the challenged claims are unpatentable.
`
`35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
`
`8
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`IPR2019-00733
`Patent 7,036,128 B1
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`
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) any objective evidence of obviousness
`
`or non-obviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. The Level of Ordinary Skill in the Art
`
`
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(internal quotation marks and citation omitted).
`
`
`
`Petitioner’s declarant, Dr. Olsen, opines that a person of ordinary skill
`
`in the art at the time of the invention of the ’128 patent would have had at
`
`least a Bachelor’s degree in computer science, electrical engineering, or a
`
`similar discipline, and one to two years of work experience in networked
`
`computer systems or a related area. Ex. 1002 ¶ 14; see Pet. 5. Patent Owner
`
`does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the
`
`art. PO Resp. passim.
`
`
`
`5 The parties have not directed our attention to any objective evidence of
`obviousness or non-obviousness.
`
`9
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`IPR2019-00733
`Patent 7,036,128 B1
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`
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`We find Dr. Olsen’s definition consistent with the level of ordinary
`
`skill in the art reflected by the prior art of record. See Okajima v. Bourdeau,
`
`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995). Therefore, we adopt Dr. Olsen’s definition of the level of
`
`ordinary skill in the art.
`
`C. Claim Construction
`
`
`
`In an inter partes review requested in a petition filed on or after
`
`November 13, 2018, we apply the same claim construction standard used in
`
`district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). See Changes to the Claim Construction
`
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`
`and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
`
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
`
`codified at 37 C.F.R. § 42.100(b) (2019)). In applying that standard, claim
`
`terms generally are given their ordinary and customary meaning as would
`
`have been understood by a person of ordinary skill in the art at the time of
`
`the invention and in the context of the entire patent disclosure. Phillips, 415
`
`F.3d at 1312–13. “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`
`1312–17).
`
`
`
`We determine that no claim terms require express construction in
`
`order to resolve the parties’ disputes. See Pet. 20 (“[T]he Board need not
`
`construe any terms of the challenged claims to resolve the underlying
`
`10
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`IPR2019-00733
`Patent 7,036,128 B1
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`controversy, as any reasonable construction reads on the prior art.”); Paper 6
`
`(“Prelim. Resp.”), 5–6 (Patent Owner stating, under the “Claim
`
`Construction” heading, “it is not necessary for the Board to construe any
`
`terms to determine whether it should institute review.”); PO Resp. i (Patent
`
`Owner’s table of contents lacking a section heading for “Claim
`
`Construction”).
`
`D. The Alleged Obviousness of Claims 1, 2, 5, 20, and 21
`Over Martin and Steiner
`
`
`
`Petitioner alleges that claims 1, 2, 5, 20, and 21 of the ’128 patent
`
`would have been obvious over Martin and Steiner. See Pet. 21–41
`
`(addressing claim 1). Petitioner contends that Martin teaches much of the
`
`claimed subject matter of independent claim 1, and turns to Steiner for
`
`certain location-related teachings. See id. Petitioner argues that it would
`
`have been obvious “in view of Steiner to configure Martin’s community of
`
`agents to implement [location agent] features.” Id. at 35 (citing Ex. 1002
`
`¶ 97). Patent Owner argues that Steiner is not analogous art, that
`
`Petitioner’s reasoning to combine the references is inadequate, and that
`
`Petitioner does not explain how to combine Martin and Steiner. See, e.g.,
`
`PO Resp. 1–3.
`
`1. Overview of Martin (Ex. 1011)
`
`
`
`Martin relates to the Open Agent Architecture (OAA), which “makes
`
`it possible for software services to be provided through the cooperative
`
`efforts of distributed collections of autonomous agents.” Ex. 1011, 3556
`
`(Abstr.). According to Martin, “[c]ommunication and cooperation between
`
`
`
`6 We, like Petitioner, cite herein to the page numbers in the Martin reference
`(Exhibit 1011) rather than the page numbers of the exhibit.
`
`11
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`IPR2019-00733
`Patent 7,036,128 B1
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`agents are brokered by one or more facilitators, which are responsible for
`
`matching requests, from users and agents, with descriptions of the
`
`capabilities of other agents.” Id.
`
`
`
`Figure 1 of Martin is reproduced below.
`
`Figure 1 depicts the structure typical of a small OAA system, showing a user
`
`interface agent, several application agents, and meta-agents, organized as a
`
`community of peers by their common relationship to a facilitator agent. Id.
`
`at 359. Figure 1 also shows an Interagent Communication Language. Id.
`
`
`
`at 361, Fig. 1.
`
`
`
`According to Martin, cooperation among the agents of an OAA
`
`system is achieved via messages expressed in a common language,
`
`Interagent Communication Language (ICL). Id. at 362. Martin describes
`
`“Mechanisms of Cooperation” as follows.
`
`Cooperation among the agents of an OAA system is achieved
`via messages expressed in a common language, ICL, and is
`normally structured around a 3-part approach: providers of
`services register capabilities specifications with a facilitator;
`requesters of services construct goals and relay them to a
`facilitator, and facilitators coordinate the efforts of the
`appropriate service providers in satisfying these goals.
`
`Id.
`
`12
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`IPR2019-00733
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`
`
`According to Martin, all agents that are not facilitators are called
`
`client agents. Id. at 361. Martin describes that when invoked, a client agent
`
`makes a connection to a facilitator. Id. at 361–62. Upon connection, an
`
`agent informs the facilitator of the services it can provide. Id. at 362. When
`
`the agent is needed, the facilitator sends it a request expressed in ICL. Id.
`
`The agent parses this request, processes it, and returns answers or status
`
`reports to the facilitator. Id.
`
`
`
`Martin discloses a “Multimodal Map application, in which a user
`
`issues commands on a map by drawing, writing and speaking[.]” Id. at 359.
`
`The Multimodal Map application is described as “Pen/Voice interface to
`
`distributed web data.” Id. at 360 (Table 1, “A partial list of applications
`
`written using OAA.”).
`
`2. Overview of Steiner (Ex. 1028)
`
`
`
`Steiner pertains to the use of a satellite-based location determination
`
`system, Global Positioning System (GPS), with a personal digital computing
`
`device (PDA). Ex. 1028, 3:16–17, 6:1–6. Steiner describes the disclosed
`
`device as follows.
`
`A Personal Digital Location Apparatus for displaying a
`geographical location as an icon on a map. The apparatus
`includes a GPS Smart Antenna for determining the
`geographical location, a personal computing device including a
`display, a processing system including a standard software
`operating system . . . , and a map application program capable
`of running in the operating system.
`
`Id., code (57) (Abstr.).
`
`3. Whether Steiner is Analogous Art
`
`
`
`Patent Owner argues that Steiner is non-analogous art and, therefore,
`
`cannot be combined with Martin. PO Resp. 1–2; see id. at 8.
`
`13
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`IPR2019-00733
`Patent 7,036,128 B1
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`
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`Two separate tests define the scope of analogous prior art:
`
`“(1) whether the art is from the same field of endeavor, regardless of the
`
`problem addressed and, (2) if the reference is not within the field of the
`
`inventor’s endeavor, whether the reference still is reasonably pertinent to the
`
`particular problem with which the inventor is involved.” In re Bigio, 381
`
`F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted).
`
`a. Field of Endeavor
`
`
`
`The field of endeavor test “rests on an assessment of the nature of the
`
`application and claimed invention in addition to the level of ordinary skill in
`
`the art.” In re Bigio, 381 F.3d at 1326. We “determine the appropriate field
`
`of endeavor by reference to explanations of the invention’s subject matter in
`
`the patent application, including the embodiments, function, and structure of
`
`the claimed invention.” Id. at 1325 (citations omitted).
`
`
`
`Patent Owner argues that Steiner is not in the same field of endeavor
`
`as the claimed invention. PO Resp. 8–15; PO Sur-reply 3–9. Patent Owner
`
`contends that the field of endeavor of the claimed invention is “computer
`
`environments and communication among software agents within a
`
`distributed computing environment.” PO Resp. 10; PO Sur-reply 5. Patent
`
`Owner further contends that, in contrast, the field of endeavor of Steiner is
`
`“multiple uses of memory cartridges and serial interfaces for Personal
`
`Digital Assistants.” PO Sur-reply 3 (quoting Ex. 1028, 1:9–10); see PO
`
`Resp. 9 (quoting Ex. 1028, 1:9–10). Patent Owner asserts that “Steiner
`
`discloses the creation of a physical Personal Digital Assistant with specific
`
`features, such as built-in memory storage, internal power source, GPS Smart
`
`Antenna that receives GPS satellite signals and provides GPS location
`
`information.” PO Resp. 10 (citing Ex. 1028, 6:1–11); see also id. at 15
`
`14
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`
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`IPR2019-00733
`Patent 7,036,128 B1
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`(Patent Owner characterizing “personal GPS devices” as “the focus of
`
`Steiner”).
`
`
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`Petitioner, on the other hand, contends that the field of endeavor
`
`involves a location aspect, specifically arguing that “[t]he ’128 patent is
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`directed, among other things, to the incorporation of ‘GPS or position agents
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`. . . into a highly mobile computing environment.’” Pet. Reply 2 (quoting
`
`Ex. 1001, 1:25–27). Regarding the reference, Petitioner argues that, “[j]ust
`
`like the ’128 patent, Steiner is also directed to the incorporation of GPS into
`
`a mobile computing environment to provide map information.” Id. at 3.
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`
`
`The ’128 patent issued from a continuation-in-part application.
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`Ex. 1001, code (63). According to Patent Owner, the disclosed subject
`
`matter in the ’128 patent that is new relative to its parent application
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`includes Figures 17–25 and the discussion at column 30, line 7, through
`
`column 35, line 17. Prelim. Resp. 39. Patent Owner asserts that “[t]he
`
`new ’128 Patent material concerns ‘Distributed Agents in a Highly Mobile,
`
`Ambient Computing Environment,’ and specifically discusses the use of
`
`GPS, control of navigation systems, control of automobile sound systems,
`
`and interface and control of car entertainment centers.” Id. (citing Ex. 1001,
`
`30:23–32:63). These concepts of mobility, GPS, and navigation are found in
`
`the language of independent claim 1 calling for at least one of the service-
`
`providing electronic agents to be a “location agent operable to ascertain a
`
`current physical location of a user.” Ex. 1001, 35:43–46. The preamble ties
`
`together the concepts of mobility and of distributed agents in reciting a
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`“community of distributed electronic agents, organized to provide a mobile
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`computing environment.” Id. at 35:27–29.
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`15
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`IPR2019-00733
`Patent 7,036,128 B1
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`
`
`The specification of the ’128 patent, in the “Field of Invention”
`
`section, explains:
`
`The present invention is related to distributed computing
`
`environments and the completion of tasks within such
`environments. In particular, the present invention teaches a
`variety of software-based architectures for communication and
`cooperation among distributed electronic agents to incorporate
`elements such as GPS or positioning agents and speech
`recognition into a highly mobile computing environment.
`
`Ex. 1001, 1:20–27. The Specification further describes the combination of
`
`distributed agent architecture and location detection for a mobile computing
`
`environment. See, e.g., id. at 30:6–21 (“In another preferred embodiment of
`
`the present invention an application of the collaborative OAA architecture is
`
`provided which addresses the post-desktop, mobile/ubiquitous computing
`
`environment. The present invention addresses the highly mobile computing
`
`environment by incorporating elements such as: GPS agents, . . . by using
`
`autonomous service-providing electronic agents associated with available
`
`resources . . . .”); id. at 30:37–45 (“In addition, the present invention enables
`
`intelligent collaboration among agents including . . . location-aware agents
`
`providing current positional information through technologies such as
`
`Global Positioning System (‘GPS’). Such collaboration yields powerful
`
`results greatly enhancing the mobile user’s experience . . . .”).
`
`
`
`Neither party’s proposed definition of the ’128 patent’s field of
`
`endeavor is complete, with Patent Owner focusing on a distributed
`
`computing environment and Petitioner focusing on location ascertainment.
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`PO Resp. 8–10; Pet. Reply 2–3. The person of ordinary skill in the art
`
`would recognize that the field of endeavor includes both components. We
`
`determine that the field of endeavor of the ’128 patent is, as stated in the
`
`Field of Invention, “communication and cooperation among distributed
`
`16
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`IPR2019-00733
`Patent 7,036,128 B1
`
`electronic agents to incorporate elements such as GPS or positioning agents
`
`and speech recognition into a highly mobile computing environment.”
`
`Ex. 1001, 1:20–27; see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)
`
`(characterizing the “field of the art” statement in the Background of
`
`Invention section of the specification as a “more realistic description of the
`
`field in which appellants endeavored”).
`
`
`
`Steiner’s “Field of Invention” section states that “[t]his invention
`
`relates to multiple uses of memory cartridges and serial interfaces for
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`Personal Digital Assistants.” Ex. 1028, 7:7–10. However, this statement,
`
`which conspicuously omits any reference to GPS, is not a complete picture
`
`of Steiner’s field. The title of the Steiner patent is more indicative, stating,
`
`“Personal Digital Location Assistant Including a Memory Cartridge, a GPS
`
`Smart Antenna and a Personal Computing Device.” Id., code (54). In that
`
`same vein, the Abstract offers the following description of the disclosed
`
`subject matter:
`
`A Personal Digital Location Apparatus for displaying a
`
`geographical location as an icon on a map. The apparatus
`includes a GPS Smart Antenna for determining the
`geographical location, a personal computing device including a
`display, a processing system including a standard software
`operating system such as DOS, Windows, Macintosh, or
`Geoworks, and a map application program capable of running
`in the operating system.
`
`Id., code (57).
`
`
`
`Patent Owner argues that “Steiner is not related to . . . communication
`
`among software agents within a distributed computing environment, and
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`thus, is in a different field of endeavor than the ’128 Patent.” PO Resp. 10;
`
`see also PO Sur-reply at 5. Petitioner, in its field of endeavor argument and
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`consistent with the description in Steiner’s abstract, characterizes Steiner as
`
`17
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`IPR2019-00733
`Patent 7,036,128 B1
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`being “directed to the incorporation of GPS into a mobile computing
`
`environment to provide map information.” Pet. Reply 3. Petitioner,
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`however, does not direct us to any indication that Steiner’s endeavor
`
`involves a distributed computing environment. See id. at 1–5; cf. PO
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`Sur-reply 8 (arguing that no form of the term “agent” appears in Steiner and
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`that Steiner’s device is not capable of communicating in a distributed
`
`computing environment). We determine that Steiner is not in the same field
`
`of endeavor as the ’128 patent.
`
`
`
`Petitioner relies on teachings from another prior art reference, Martin,
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`in arguing that Steiner is in the same field of endeavor as the ’128 patent.
`
`Pet. Reply 4–5. Petitioner asserts that Martin discloses displaying map
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`information on a mobile device and in a distributed computing environment,
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`and argues that, “Martin bridges any gap between computer environments
`
`and communication among software agents within a distributed computing
`
`environment, and the use of map information with a PDA.” Id. at 4. In so
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`arguing, Petitioner misplaces reliance on Airbus S.A.S. v. Firepass Corp.,
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`941 F.3d 1374, 1380 (Fed. Cir. 2019). Id.; Tr. 38:8–10 (“[Martin] discloses
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`how the Open Agent Architecture can be used with PDAs [not] unlike that in
`
`the Steiner reference.”).
`
`
`
`As Airbus states, “the knowledge of a person of ordinary skill in the
`
`art, as demonstrated by particular prior art references, could be relevant to
`
`establishing the scope of the field of endeavor.” Airbus, 941 F.3d at 1381.
`
`Prior art references other than the subject one can be important “as record
`
`evidence relevant to the knowledge and perspective of an ordinarily skilled
`
`artisan at the time of the invention.” Id. Thus, Airbus stands for the
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`proposition that other references may be used to better understand the
`
`18
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`IPR2019-00733
`Patent 7,036,128 B1
`
`ordinary artisan’s perspective as to the field of endeavor. However, in this
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`case, Petitioner is not using Martin to help us understand what Steiner
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`discloses to a person of ordinary skill in the art at the time of the invention.
`
`See Pet. Reply 4. Rather, Petitioner relies on Martin for material that Steiner
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`does not disclose, arguing that Martin fills the gap between the ’128 patent
`
`and Steiner. Id. Petitioner’s implied argument that the combination of
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`Martin and Steiner would result in something in the same field of endeavor
`
`as the ’128 patent is not persuasive in showing that Steiner itself is in the
`
`same field of endeavor.
`
`b. Reasonably Pertinent
`
`
`
`“A reference is reasonably pertinent [and, thus, analogous art] if, even
`
`though it may be in a different field from that of the inventor’s endeavor, it
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`is one which, because of the matter with which it deals, logically would have
`
`commended itself to an inventor’s attention in considering his problem.”
`
`In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992); see In re GPAC Inc., 57 F.3d
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`1573, 1578 (Fed. Cir. 1995) (References are analogous art “when a person of
`
`ordinary skill would reasonably have consulted those references and applied
`
`their teachings in seeking a solution to the problem that the inventor was
`
`attempting to solve.”). “[T]he purposes of both the invention and the prior
`
`art are important in determining whether the reference is reasonably
`
`pertinent to the problem the invention attempts to solve.” In re Clay, 966
`
`F.2d at 659. In considering whether a reference is reasonably pertinent, we
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`are directed “to construe the scope of analogous art broadly” because
`
`“familiar items may have obvious uses beyond their primary purposes, and a
`
`person of ordinary skill often will be able to fit the teachings of multiple
`
`patents together like pieces of a puzzle.” Wyers v. Master Lock Co., 616
`
`F.3d 1231, 1238 (Fed. Cir. 2010)
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