Trials@uspto.gov Paper 54
571-272-7822 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)
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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.
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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
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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.
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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.
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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.
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E. Evidence
Petitioner relies on the following references:
Reference Exhibit No.
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
1011
US 5,528,248; filed Aug. 19, 1994; issued June 18, 1996
(“Steiner”)
1028
US 5,608,635; filed Nov. 17, 1994; issued Mar. 4, 1997
(“Tamai”)
1029
US 5,835,881; filed Jan. 16, 1996; issued Nov. 10, 1998
(“Trovato”)
1030
WO 93/05492; filed Aug. 28, 1992; published Mar. 18, 1993
(“Anagnostopoulos”)
1031
US 6,009,355; filed Jan. 28, 1997; issued Dec. 28, 1999
(“Obradovich”)
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)).
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Reference Exhibit No.
US 5,434,907; filed Mar. 13, 1992; issued July 18, 1995
(“Hurst”)
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
3 103(a) Martin, Steiner, Tamai
4 103(a) Martin, Steiner, Trovato
6 103(a) Martin, Steiner, Anagnostopoulos,
Tamai
7–11 103(a) Martin, Steiner, Obradovich
12 103(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).
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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.
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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
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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.
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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.
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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.
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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
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(Patent Owner characterizing “personal GPS devices” as “the focus of
Steiner”).
Petitioner, on the other hand, contends that the field of endeavor
involves a location aspect, specifically arguing that “[t]he ’128 patent is
directed, among other things, to the incorporation of ‘GPS or position agents
. . . 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.
The ’128 patent issued from a continuation-in-part application.
Ex. 1001, code (63). According to Patent Owner, the disclosed subject
matter in the ’128 patent that is new relative to its parent application
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
“community of distributed electronic agents, organized to provide a mobile
computing environment.” Id. at 35:27–29.
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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.
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
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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
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
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
consistent with the description in Steiner’s abstract, characterizes Steiner as
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being “directed to the incorporation of GPS into a mobile computing
environment to provide map information.” Pet. Reply 3. Petitioner,
however, does not direct us to any indication that Steiner’s endeavor
involves a distributed computing environment. See id. at 1–5; cf. PO
Sur-reply 8 (arguing that no form of the term “agent” appears in Steiner and
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,
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
information on a mobile device and in a distributed computing environment,
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
arguing, Petitioner misplaces reliance on Airbus S.A.S. v. Firepass Corp.,
941 F.3d 1374, 1380 (Fed. Cir. 2019). Id.; Tr. 38:8–10 (“[Martin] discloses
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
proposition that other references may be used to better understand the
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ordinary artisan’s perspective as to the field of endeavor. However, in this
case, Petitioner is not using Martin to help us understand what Steiner
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
does not disclose, arguing that Martin fills the gap between the ’128 patent
and Steiner. Id. Petitioner’s implied argument that the combination of
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
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
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
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) (quoting KSR, 550 U.S. at 402).
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Patent Owner contends that the problem addressed by the ’128 patent
is “develop[ing] distributed systems involving communication and
cooperation among software agents.” PO Resp. 17 (“Steiner’s concern . . . is
far afield from the problem addressed by the ’128 Patent. There is no
indication that a POSA trying to develop distributed systems involving
communication and cooperation among software agents (i.e., the ’128
Patent), would look to personal handheld devices (i.e., Steiner).”); see also
PO Sur-reply 11 (“[T]he ʼ128 Patent provides for ‘[c]ommunication and
cooperation between agents [] brokered by one or more facilitators, which
are responsible for matching requests, from users and agents, with
descriptions of the capabilities of other agents . . . .’” (quoting Ex. 1001,
code (57) (Abstract))). Patent Owner argues that “[c]ritically, providing
‘map information’ or ‘GPS to identify location’ is not the focus of the
’128 Patent.” PO Resp. 18. Thus, Patent Owner argues that the problem
addressed in the ’128 patent pertains only to distributed systems and
software agents. Patent Owner contrasts this with the prior art, contending
that the problem addressed by Steiner is “creating an improved Personal
Digital Location Assistant device.” PO Resp. 16; see also Sur-reply 12
(same).
Petitioner, on the other hand, argues that both the ’128 patent and
Steiner relate to the same problem of “location determination for a map in a
mobile device context.” Pet. Reply 6.
The challenged ’128 patent issued from an application that is a
continuation-in-part of the application that issued as U.S. Patent
No. 6,851,115 B1 (“the ’115 patent”). Ex. 1001, code (63). The ’115 patent
describes “software-based architectures for communication and cooperation
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among distributed electronic agents.” Ex. 1006, 1:27–29. As Patent Owner
admits, the subject matter newly added in the continuation-in-part
application “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.” Prelim. Resp. 39 (citing Ex. 1001,
30:23–32:63). Thus, the ’128 patent builds on its parent and represents an
application of the distributed agent system in a mobile computing
environment and utilizes a location agent. An example of this is navigation
in a moving vehicle, as depicted in Figure 17 of the ’128 patent, reproduced
below.
Figure 17 above “is an illustration showing a navigation panel in accordance
with one embodiment of the present invention [of the ’128 patent].”
Ex. 1001, 6:1–2.
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Independent claim 1 of the ’128 patent incorporates a location agent
into a mobile computing environment of distributed electronic agents,
specifically reciting “[a] collaborative computer-implemented community of
distributed electronic agents, organized to provide a mobile computing
environment . . . including at least one location agent operable to ascertain a
current physical location of a user.” Ex. 1001, 35:27–29, 35:43–46. The
Specification explains, under the heading “Distributed Agents in a Highly
Mobile, Ambient Computing Environment”:
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, speech recognition (including
other hands-free UI, multi-modal UI), and opportunistic
connectivity among meeting participants (utilizing docked or
IR-linked PDA’s in addition to Internet sites), by using
autonomous service-providing electronic agents associated
with available resources, such as meeting resources.
Id. at 30:6–21 (emphases added). The Specification identifies, as examples
of the mobile computing environment, a car environment and a portable
computing device. Id. at 30:25–28. The Specification further explains:
In addition, the present invention enables intelligent
collaboration among agents including user interface agents for
providing an ambient interface well suited for the mobile
environment as just described, as well as 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, as will now be described and
illustrated.
Id. at 30:37–45.
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A person of ordinary skill in the art at the time of the invention would
have known that a distributed system involving communication and
cooperation among software agents was known. See Ex. 1011,7 355 (“The
Open Agent Architecture (OAA), developed and used for several years at
SRI International, makes it possible for software services to be provided
through the cooperative efforts of distributed collections of autonomous
agents. Communication and cooperation between 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.”); Pet.
Reply 4–5, 6 (citing Martin (Ex. 1011) in arguing that Steiner is analogous
art); see also Tr. 37:13–39:3 (Petitioner responding to Patent Owner’s
Sur-reply). We evaluate whether Steiner is “reasonably pertinent” in light of
the knowledge of the person of ordinary skill in the art at the time of the
invention and in recognition that the challenged ’128 patent, as a
continuation-in-part, builds on its parent by implementing a distributed agent
system in a mobile environment via the incorporation of location
ascertainment. We find it inappropriate in this case to define narrowly the
problem addressed by the ’128 patent as being focused on only distributed
7 It is appropriate to consider Martin (Ex. 1011) in order to inform our
understanding as to how the person of ordinary skill in the art at the time of
the invention would perceive the problem addressed by the challenged
patent and by the purportedly analogous art reference. See Airbus, 941 F.3d
at 1382–83 (holding that the Board erred in failing to consider cited
references in addition to the purportedly analogous one and explaining that,
“[i]n order to determine whether a reference is ‘reasonably pertinent,’ then, a
reasonable factfinder should consider record evidence cited by the parties to
demonstrate the knowledge and perspective of a person of ordinary skill in
the art at the time of the invention.”).
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agent systems, as Patent Owner advocates. See PO Sur-reply 12 (referring
to “solv[ing] problems related to developing distributed systems involving
communication and cooperation among software agents (i.e., the ’128
Patent).”). We find that the problem addressed by the ’128 patent includes a
location ascertainment aspect.
Steiner explains that then-existing handheld GPS devices (those
devices specifically configured for the limited purpose) as well as handheld
computers coupled to GPS antennas had shortcomings. Ex. 1028, 5:26–52.
Handheld GPS receivers at that time had “limited or no computing power,
databases, or map display and [could not] use applications programmed in
standard operating systems.” Id. at 5:26–30. Handheld computers, on the
other hand, had computing power for maps and utilized standard operating
systems. Id. at 5:31–33. A limitation of those systems was that the user
could not easily change the location determination application without
purchasing duplicate GPS hardware. Id. at 5:50–52. Steiner identifies the
problem to be addressed:
What is needed is an handheld apparatus having a GPS
antenna and receiver to provide location information, capable of
using standard operating systems such as DOS, Windows,
Macintosh, or Geoworks to run existing applications, and
capable of running programs written in high level languages
such as C to provide a mobile professional, a personal traveler,
or a navigator with a display of his location and relative
locations and the attributes of map features proximate to him.
Id. at 5:53–61.
Steiner is reasonably pertinent to the problem addressed by the
’128 patent and would have commended itself to one seeking to solve that
problem. Both are concerned with adapting a computing system to a mobile
environment by the incorporation of GPS and the like in order to ascertain
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the user’s location on an electronic map. The mobile computing
environment of the ’128 patent involves distributed electronic agents with
one being a location-aware agent, and the mobile computing environment of
Steiner is a handheld computer that may be easily reprogrammed with a
desired location determination application. The differences between these
computing environments do not, as Patent Owner argues, remove Steiner as
a reference that would be considered in addressing the problem of the
’128 patent.
Patent Owner raises, in its Sur-reply for the first time, the argument
that “there is no evidence of foresight” to support a finding of analogous art
and, therefore, only hindsight remains. PO Sur-reply 12–13 (citing Sci.
Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014)
(“The pertinence of the reference as a source of solution to the inventor’s
problem must be recognizable with the foresight of a person of ordinary
skill, not with the hindsight of the inventor’s successful achievement.”)).
Even treating this as a timely argument, we are not persuaded. Patent
Owner’s assertion fails to acknowledge that the record contains evidence
indicating the understanding of the problems in the art through the lens of a
person of ordinary skill in the art at the time of the invention, including at
least Steiner itself (disclosing the known use of GPS), Martin, the
’128 patent (which describes the state of the art and explicitly ties GPS to
the named-inventors’ endeavor), and Dr. Olsen’s testimony (see, e.g.,
Ex. 1002 ¶¶ 16–60 (discussing that which, “during the time preceding
January 1999, a person of ordinary skill in the art would have been aware”),
62–66 (discussing the disclosures of Martin and Steiner), 98 (“Thus, Steiner
relates to usage of a personal computing device for providing map
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information, so a person of ordinary skill in the art would have had reason to
consider the teachings of Steiner when implementing Martin’s Open Agent
Architecture, which is used for a map application (Multimodal Map) as I
discussed above in this section.”)). Patent Owner’s late attempt to raise the
specter of “hindsight” does not persuade us that a person of ordinary skill in
the art at the time of the invention would fail to recognize, with foresight,
the pertinence of Steiner to the ’128 patent.
Although Patent Owner does not offer its own definition of the person
of ordinary skill in the art, Patent Owner questionably argues that “providing
‘map information’ or ‘GPS to identify location’ is not the focus of the
’128 Patent,” PO Resp. 18, and, based on this, impliedly argues that a person
of ordinary skill in the pertinent art would not have been “sufficiently aware
of personal GPS devices (the focus of Steiner) to even look at such devices,”
id. at 15. Patent Owner makes much of Dr. Olsen’s testimony on
cross-examination that he had no opinion as to “[h]ow many people knew
about [commercial mapping/portable personal mapping devices].” PO
Resp. 15 (quoting Ex. 2024, 226:6–24). We do not find to be dispositive the
fact that Dr. Olsen, in a 2019 deposition, could not remember the degree of
commercialization of GPS in the 1999 timeframe. The better evidence is the
contemporaneous reference. Steiner, having an issuance date of 1996,
explains that GPS had many applications at that time. See, e.g., Ex. 1028,
4:59–64 (“GPS is used by many professionals engaged in navigation and
surveying fields such as marine navigation, aircraft piloting, seismology,
boundary surveying, and other applications where accurate location is
required or where the cost of GPS is small compared to the cost of a mistake
in determining location.”); id. at 5:1–3 (“GPS is also used for personal travel
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such as hiking, biking, horseback riding, yachting, fishing, driving in
personal cars, and other travel activities.”). And notwithstanding Patent
Owner’s assertion that “GPS to identify location” is not the “focus” of
the ’128 patent, PO Resp. 18, that patent removes any doubt as to the
ordinary artisan’s knowledge on the subject in stating:
New 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.
Ex. 1001, 30:46–49 (emphasis added). Lastly, as discussed above, the
ordinary artisan at the time would have been a computer scientist, an
electrical engineer, or similar, supra, Section II.B, and we decline to find
that such a person would have had no knowledge of GPS as Patent Owner
seems to suggest.
Accordingly, for the reasons explained above, we determine that
Steiner is analogous art to the ’128 patent.
4. The Alleged Obviousness of Claim 1 in View of
Martin and Steiner
a. 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
Petitioner asserts that the Open Agent Architecture of Martin “is a
computer-implemented community of distributed electronic agents,
organized to provide a mobile computing environment.” Pet. 21 (citing
Ex. 1002 ¶ 79; Ex. 1011, Title). Petitioner also asserts that “because
Martin’s community of distributed agents provide[s] services to a user on a
personal digital assistant (PDA), which is a mobile computing device,
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Martin’s community of distributed agents provides a mobile computing
environment.” Id. at 24 (citing Ex. 1002 ¶ 82; Ex. 1011, 374). Patent
Owner does not contest these assertions. Regardless of whether this
preamble language is limiting, we find, based on the evidence cited by
Petitioner, that it is disclosed in the asserted prior art. Id. at 21–25.
b. [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
Petitioner argues that Martin discloses that service providers register
capability specifications with a facilitator and that every agent participant in
an OAA-based system publishes capability declarations in ICL. Pet. 25
(citing Ex. 1011, 362, 364; Ex. 1002 ¶ 85).
Quoting the reference, Petitioner notes that “Martin states that ‘[t]he
ICL includes a layer of conversational protocol [that] is defined by the event
types, together with the parameter lists that are associated with certain of
these event types.’” Id. at 27 (quoting Ex. 1011, 363) (emphasis omitted,
alteration in original).
Petitioner further argues that Martin explains that parameter lists
refine the semantics of a request for service, which, according to Petitioner,
is expressed by an “event.” Id. at 28 (citing Ex. 1011, 363, 367; Ex. 1002
¶ 88). Petitioner contends that, “because an event is used to request services
and a request ‘arrives in the form of an event’ . . . , a POSITA would have
understood that Martin’s disclosure of parameter lists refining a request also
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discloses that the parameter lists refine events.” Id. at 29 (citing Ex. 1002
¶ 89; quoting Ex. 1011, 364).
Patent Owner does not contest these assertions. We find, based on the
evidence cited by Petitioner, that these limitations 1.a, 1.b, and 1.c are taught
or suggested by Martin.8 Id. at 25–32.
c. [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
Petitioner argues that Martin discloses that a facilitator agent
coordinates the efforts of the appropriate service providers to satisfy goals,
and that Martin also discloses task completions, thereby disclosing a
“facilitator agent [that] is arranged to coordinate cooperative task completion
among the electronic agents.” Pet. 31–32 (citing Ex. 1002 ¶¶ 92–93;
Ex. 1011, 359, 362, Fig. 1). According to Petitioner, this coordination is
done based upon the registered capabilities of the selected agents. Id. at 32
(citing Ex. 1002 ¶ 94).
Patent Owner does not contest these arguments. We find, based on
the evidence cited by Petitioner, that this facilitator agent limitation is taught
or suggested by Martin. Id. at 31–33.
8 Petitioner also reasons that, if Martin does not explicitly disclose that the
parameter lists further refine the one or more events, it would have been
obvious in light of Martin’s teachings and that which was common
knowledge in the art. Pet. 29–31 (citing Ex. 1002 ¶¶ 90–91; Ex. 1011, 363;
Ex. 1050 (Stroustrup), 153). In light of our findings here, we need not reach
this alternative argument.
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d. [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
Petitioner contends that the combination of Martin and Steiner
discloses this recitation. Pet. 33.
Petitioner asserts, and we agree, that Martin discloses multiple
application agents (mapped to the recited “one or more service-providing
electronic agents”). Id. at 33–34 (citing Ex. 1011, 361, Fig. 1). Petitioner,
relying on the testimony of Dr. Olsen, argues that those application agents
are in bi-directional communication with the facilitator. Id. at 34 (citing
Ex. 1011, 361, Fig. 1; Ex. 1002 ¶ 96). Petitioner contends that Martin’s
Figure 1, reproduced below, supports its arguments. Id.
Figure 1 depicts an OAA system structure where, among other things, there
is a line connecting an application agent to the facilitator and, next to that
connecting line, two arrows pointing in opposite directions along with the
phrase “Interagent Communication Language.” Ex. 1011, 361. Martin, in
providing an overview of OAA system structure in the context of Figure 1,
states that “[t]he facilitator is a specialized server agent that is responsible
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for coordinating agent communications and cooperative problem-solving.”
Id. at 359.
Petitioner asserts, and we agree, that Martin discloses a Multimodal
Map application that displays a map to the user and that an application
implemented using OAA provides “[m]obile interfaces (PDA with
telephone).” Pet. 34 (quoting Ex. 1011, 360; citing Ex. 1011, 359–60;
Ex. 1002 ¶ 97); see Ex. 1011, 359 (describing an example of “the
Multimodal Map application, in which a user issues commands on a map by
drawing, writing and speaking, the spoken phrase ‘Show a photo of the
hotel’”).
Petitioner asserts that, although Martin discloses a Multimodal Map
application, it does not disclose that the application agents include the
recited location agent operable to ascertain a current physical location of a
user. Pet. 34. Petitioner turns to Steiner for this aspect of the limitation. Id.
at 35. Petitioner asserts, and we agree, that Steiner teaches a personal digital
location apparatus utilizing a GPS antenna for determining a geographic
location, where the apparatus displays a geographic location as an icon on a
map. Id. (citing Ex. 1028, Abstr., Title; Ex. 1002 ¶ 98). Petitioner describes
Steiner’s use of a PDA with GPS, and asserts that “Steiner discloses
ascertaining a current physical location of a PDA, and thus also of a user of
the PDA.” Id. at 35–36 (citing, inter alia, Ex. 1002 ¶ 99). We agree with
these assertions.
Petitioner’s proposed combination is to “configure Martin’s
application agents to include at least one location agent operable to ascertain
a current physical location of a user” and to implement this in Martin’s PDA
such that a location could be used to provide useful information to the user
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via the Multimodal Map application. Id. at 36–37 (citing Ex. 1002 ¶ 100).
In other words, Petitioner proposes to include, as one of its agents, a location
agent in accordance with Steiner’s teachings of location ascertainment and
GPS. Petitioner’s reasoning as to why one of ordinary skill in the art would
be motivated to combine Martin and Steiner is discussed further below.
Patent Owner maintains that Petitioner fails to provide a clear
mapping of claim limitations, arguing that it is unclear as to whether
Steiner’s teachings are being utilized for the “location agent” element or the
“computer interface agent.” PO Resp. 31–32. We disagree. Petitioner
clearly relies on Steiner’s teachings for the “location agent” limitation of
limitation 1.e. See Pet. 35–37; see also id. at 37 (Petitioner arguing, for
limitation 1.f, “Martin discloses that the Open Agent Architecture comprises
a user interface agent (‘one or more computer interface agents’)”).
Patent Owner assets that “[t]he term ‘bi-directional’ is not found in
Martin” and argues that Petitioner has failed to explain how Martin discloses
the recited “bi-directional communication.” PO Resp. 32–33; see also PO
Sur-reply 21–22. For the following reasons, we do not agree with this
assertion or with Patent Owner’s argument, which is made without the
support of expert testimony, that “there is no description of communication
flow paths in Martin.” PO Resp. 33.
To the extent that Patent Owner requires the prior art to use the exact
terminology as the claim, an obviousness determination is not an ipsissimis
verbis test. Cf. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
(addressing a similar concept in the context of anticipation). Instead, the test
for obviousness is whether the references, taken as a whole, would have
suggested the claimed subject matter to a person of having ordinary skill in
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the art at the time the invention was made. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
As discussed above, the Petitioner relies on Martin’s Figure 1 and
Dr. Olsen’s testimony as evidence of Martin’s disclosure of bi-directional
communication. See Pet. 34 (citing Ex. 1011, 361, Fig. 1; Ex. 1002 ¶ 96).
Dr. Olsen testifies, under Martin’s Figure 1 (reproduced above), that, in
Martin, “the application agents are in bi-directional communication with the
facilitator agent.” Ex. 1002 ¶ 96. Martin’s Figure 1 has two arrows pointing
in opposite directions next to the connecting line between the application
agent and the facilitator, and next to the label Interagent Communication
Language. Ex. 1011, 351, Fig. 1. In reply to Patent Owner’s argument that
“there is nothing in Martin discussing such [bi-directional] communication,”
PO Resp. 32, Petitioner asserts that Figure 4 of the ’128 patent, in a similar
fashion, utilizes double-headed arrows connecting the Facilitator Agent and
the Application Agent to disclose bi-directional communication, Pet.
Reply 9. We note that those arrows in the ’128 patent are overlaid with
“Interagent Communication Language (ICL).” Ex. 1001, Fig. 4. Patent
Owner does not offer any persuasive expert testimony in this regard and
presents no plausible reason why a person skilled in an art involving a
computer-implemented community of distributed electronic agents,
Ex. 1011, 358–59, would fail to recognize Martin as disclosing, at least via
the two-direction arrows, “bi-directional communication.”
We find that Martin discloses, at least in Figure 1, the recited
“bi-directional communications.” We also find that the combination of
Martin and Steiner teaches or suggests the limitation, “one or more service-
providing electronic agents, being in bi-directional communication with the
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facilitator agent, including at least one location agent operable to ascertain a
current physical location of a user.”
e. [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
Petitioner argues that Martin discloses or suggests the last limitation
in independent claim 1.9 Pet. 37–40 (citing, inter alia, Ex. 1011, Figs. 1,
14–17, 21, 27; Ex. 1002 ¶¶ 102–105). Petitioner points to, inter alia,
Martin’s Figure 1 as disclosure of the Facilitator in bi-directional
communication with the User Interface Agent (mapped to the recited
computer interface agent) and persuasively explains, relying on Dr. Olsen’s
testimony, how Martin’s User Interface Agent is operable to perform the
recited “process” and “responsibly generate and present” functions. Id.
To the extent that Patent Owner’s “bi-directional communications”
argument is directed to this limitation 1.f, see PO Resp. 32–34, our
discussion above, in the context of that phrase in limitation 1.e, applies
equally here. Patent Owner does not otherwise contest Petitioner’s
arguments regarding this limitation 1.f. We find, based on the evidence
9 The Petition, in addressing this limitation 1.f, begins with the statement,
“Martin in combination with Steiner discloses or suggests this limitation.”
Pet. 37. Petitioner does not mention Steiner again in this section, id. at 37–
41, and confirms that it does not rely on Steiner for limitation 1.f, Pet.
Reply 12. We do not find the clearly unintended mention of Steiner in the
initial sentence to be fatal to the Petition, as Patent Owner urges. See PO
Resp. 31–32; PO Sur-reply 20 (arguing that “[Petitioner] has not clearly
stated its arguments and positions in the Petition”).
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cited by Petitioner, that this computer interface agent limitation is taught or
suggested by Martin.10 Id. at 37–40.
f. Reasons to Combine the Teachings of Martin and
Steiner
As we noted above, for limitation 1.e, Petitioner argues that “Martin
does not explicitly disclose that its application agents (‘service-providing
electronic agents’) include a location agent operable to ascertain a current
physical location of a user, but it would nevertheless have been obvious in
view of Steiner to configure Martin’s community of agents to implement
such features.” Pet. 35 (citing Ex. 1002 ¶ 97).
Petitioner provides the following reasoning.
In light of Steiner’s disclosures, a POSITA would have
been motivated to configure Martin’s application agents to
include at least one location agent operable to ascertain a
current physical location of a user. (Ex. 1002, ¶100.) Given
that Martin discloses an application that uses a PDA (Ex. 1011,
360) (Automated Office is explicitly identified as using a PDA,
but a POSITA would have understood this to apply to any of
Martin’s applications) and Steiner discloses determining the
location of a PDA, a POSITA would have found it beneficial to
ascertain the location of the user of Martin’s PDA so that, e.g.,
such location information could be used for providing relevant
information to the user via Martin’s Multimodal Map
application. (Ex. 1011, 360; Ex. 1002, ¶100.)
Id. at 36–37. Thus, Petitioner’s proposed combination is the modification of
one of Martin’s agents to be a location agent in accordance with Steiner’s
10 Petitioner further argues in the alternative that, “if Martin is deemed not to
disclose that the user interface agent in particular is operable in the above
manner . . . , it would have been obvious to configure Martin’s community
of agents to implement this feature.” Pet. 40 (citing Ex. 1002 ¶ 106;
Ex. 1011, 361–62). In light of our findings here, we need not reach this
alternative argument.
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teachings. Petitioner further contends that this configuration would have
been straightforward to implement, a combination of known components
and technologies, and would have been according to known methods to
produce predictable results. Id. at 37 (citing Ex. 1011, 361; Ex. 1002 ¶ 101).
Patent Owner argues that Petitioner has relied on the ’128 patent as a
roadmap and, therefore, Petitioner has engaged in improper hindsight. PO
Resp. 26; PO Sur-reply 13–19. Patent Owner contends that Martin does not
provide a motivation to combine references because it merely discloses the
Multimodal Map as an application applying OAA and is not directed to
solving problems with or improving navigation and mapping systems. PO
Resp. 22–24, 28; PO Sur-reply 15 (“[T]he mapping example in the
specification is merely an example of an application (one of many different
applications, in fact) that was able to operate with OAA.”). This argument is
not persuasive because “neither the particular motivation nor the avowed
purpose of the patentee controls.” KSR, 550 U.S. at 419. A person of
ordinary skill in the art would not fail to appreciate Martin’s teaching of the
use of OAA with a mapping application even if that was offered as only one
example among many. See id. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).
Patent Owner argues that Petitioner has failed to explain “how to
combine references.” PO Resp. 29 (section heading). Along these lines,
Patent Owner first asserts that Petitioner has failed to explain how to
reconfigure Martin’s applications agents such that one is a location agent.
Id. at 34. The evidentiary record, however, does not persuade us that
creating or modifying application agents was anything other than routine to
one of ordinary skill in the art at the time of the invention. See id. at 34–38
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(presenting, almost exclusively, attorney argument with discussions of other
cases rather than addressing the matter as a factual issue based on the
evidence in this case). In contrast, Dr. Olsen presents credible and
unrebutted testimony that the proposed combination involves known
methods and would have been straightforward to implement and would have
produced predictable results. Ex. 1002 ¶ 101. Consistent with that
testimony, Martin indicates that the level of skill of the ordinary artisan at
the time was high and that one was familiar with electronic agents, and
Martin even teaches the utilization of a mapping application in the OAA
context. See, e.g., Ex. 1011, 359–61. We find that a person of ordinary skill
in the art would have known how to configure Martin’s agents as proposed
by Petitioner and would have been able to do so, and that the combination
would have yielded predictable results.
Patent Owner next argues that Petitioner’s proposed combination
yields an inoperable system. PO Resp. 38–42. Patent Owner’s argument is
best summarized in its Sur-reply, where it asserts that “[Petitioner] Google
does not explain how a non-networked device (i.e., Steiner’s device) is
implemented in a distributed network, which is a glaring defect in the
Petition.” PO Sur-reply 24; see also id. at 1 (arguing that the combination
“is not operable because Steiner is a self-contained device incapable of
sharing information with other devices, which is a prerequisite for
combining Steiner with Martin’s distributed agent system”); PO Resp. 40
(arguing that Steiner’s “location information is provided only internally . . .
[within] Steiner’s standalone device” and “[t]he Steiner device has no means
of sending location information to other devices” (emphasis omitted)).
Patent Owner’s argument is not persuasive as it is based on a
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mischaracterization of Petitioner’s proposed combination and a
misapplication of the law. Petitioner is not, as Patent Owner implies, bodily
incorporating Steiner’s device—a handheld GPS unit—into Martin’s
network. Rather, Petitioner proposes to combine the references’ teachings
(not two physical devices), specifically applying Steiner’s location
ascertainment teachings by having one of Martin’s agents be a location
agent. E.g., Pet. 36–37; see In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Petitioner has presented adequate and persuasive evidence that a person of
ordinary skill in the art at the time of the invention would have been able to
make this modification, and we find that the proposed combination results in
an operable system. See Pet. 37; Ex. 1002 ¶¶ 100–101.
Having considered all of the parties’ arguments and evidence, we
determine that Petitioner has provided adequate reasoning as to why one of
ordinary skill in the art would have modified Martin’s distributed agent
system by incorporating location ascertainment in accordance with Steiner’s
teachings and that this combination yields the subject matter of claim 1, and
that Petitioner has provided adequate evidence to show that a person of
ordinary skill in the art would have had a reasonable expectation of success
in doing so.
g. Conclusion as to Independent Claim 1
Based on the foregoing, Petitioner has established by a preponderance
of the evidence that independent claim 1 is unpatentable over the
combination of Martin and Steiner.
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5. The Alleged Obviousness of Dependent Claims 2, 5, 20, and 21
Over Martin and Steiner
Petitioner also contends that claims 2, 5, 20, and 21 would have been
obvious based on the same combination of prior art. Pet. 42–49. These
challenged claims depend directly from independent claim 1. Petitioner
identifies teachings in the prior art references that teach or suggest the
limitations of these dependent claims and provides persuasive reasoning as
to why the claimed subject matter would have been obvious to one of
ordinary skill in the art. Id. Petitioner also supports its contentions for these
claims with the testimony of Dr. Olsen. Ex. 1002 ¶¶ 107–117.
To the extent that Patent Owner argues that Petitioner’s mapping of
the limitations of dependent claim 2 is unclear, we do not agree. See PO
Resp. 32–33 (quoting Pet. 43). Petitioner clearly relies on Martin for the
recited computer interface agent feature and on Steiner’s teachings for the
location ascertaining feature. Pet. 42–43 (referring to the arguments for the
underlying independent claim 1); id. at 35 (location agent of limitation 1.e),
37 (computer interface agent of limitation 1.f).
Patent Owner does not present any additional arguments for these
dependent claims other than what we have considered already with respect
to independent claim 1. See, e.g., PO Resp. 37–38 (arguing that Petitioner
failed to meet its burden regarding the location agent limitation 1.e and,
therefore, “[i]ndependent claim 1 should be confirmed patentable, along
with dependent claims 2–12 and 20–21”).
We have considered the evidence and arguments of record and
determine that Petitioner has demonstrated by a preponderance of the
evidence that dependent claims 2, 5, 20, and 21 would have been obvious
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based on Martin and Steiner for the reasons discussed in the Petition as
supported by the testimony of Dr. Olsen.
E. Remaining Grounds of Obviousness
The remaining grounds (Grounds 2–6) pertain to claims that depend
directly or indirectly from independent claim 1. Petitioner provides
argument and evidence in support of its contentions that (1) claim 3 would
have been obvious over Martin, Steiner, and Tamai (Pet. 49–51; Ex. 1002
¶¶ 118–122); (2) claim 4 would have been obvious over Martin, Steiner, and
Trovato (Pet. 52–55; Ex. 1002 ¶¶ 123–127); (3) claim 6 would have been
obvious over Martin, Steiner, Anagnostopoulos, and Tamai (Pet. 55–58;
Ex. 1002 ¶¶ 128–133); (4) claims 7–11 would have been obvious over
Martin, Steiner, and Obradovich (Pet. 58–70; Ex. 1002 ¶¶ 134–150);
and (5) claim 12 would have been obvious over Martin, Steiner, Obradovich,
and Hurst (Pet. 70–73; Ex. 1002 ¶¶ 152–159).
In each of the grounds, Petitioner identifies teachings in the prior art
references that teach or suggest the limitations of these dependent claims and
provides sufficient reasoning as to why a person of ordinary skill would
have combined the asserted references’ teachings. See Pet. 49–73.
Much of Patent Owner’s arguments for these grounds are
substantively the same or similar to those addressed above in the context of
Petitioner’s challenge based on the combination of Martin and Steiner. E.g.,
PO Resp. 2 (“[F]or Grounds 1–5, the Petition does not offer sufficient
motivation to combine” and presenting the generalized “hindsight”
argument); id. at 20–21 (hindsight regarding the use of various references);
id. at 24–26 (arguing that “Martin’s Multimodal Map [is] only being
mentioned as an example of an application applying OAA,” and then
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quoting Petitioner’s reasoning for the various references); id. at 42
(“Grounds 2-6 build on the faulty foundation of purportedly combining
Martin with Steiner and add additional references to the mix (up to four
references for Grounds 4 and 6). . . . However, these combinations suffer
from the same deficiencies discussed above.”).
Regarding Petitioner’s challenge to dependent claim 4 as being
obvious over Martin, Steiner, and Travato (Ground 3), Patent Owner argues
that the proposed combination is inoperable. PO Resp. 47–48. Patent
Owner argues that, “[s]imilar to Steiner, Trovato’s device is not only
incapable of bi-directionally communicating with other agents using ICL, it
is not capable of communicating with other devices or agents at all” and that
there is no “showing of how to combine Trovato’s standalone device with
Martin’s agents.” Id. at 48. Dependent claim 4 calls for the map
information of dependent claim 2 to include spoken directions by means of a
text-to-speech output agent. Ex. 1001, 35:63–65. Petitioner asserts that
Martin discloses text-to-speech output and argues that, “[t]o the extent
Martin and Steiner do not explicitly disclose that the map information
includes spoken directions by means of a text-to-speech output agent, it
would have been obvious in further view of Trovato to implement this
feature in the combined Martin-Steiner community of agents.” Pet. 52–54
(citing Ex. 1002 ¶ 123–127). Petitioner’s proposed combination
“configure[s] Martin’s map information to include spoken directions as in
claim 4.” Id. at 54. Petitioner does not, as Patent Owner argues, propose
bodily incorporating the embodiment of Travato into Martin’s system, and
Travato’s “standalone device” configuration does not undermine Petitioner’s
proposed combination.
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Having considered all of the parties’ arguments and evidence
regarding Grounds 2 through 6, we determine that Petitioner has provided
adequate reasoning as to why one of ordinary skill in the art would have
modified Martin’s distributed agent system in light of the other cited
references’ teachings, that the proposed combinations yield the respective
subject matter of the challenged dependent claims, and that Petitioner has
provided adequate evidence to show that a person of ordinary skill in the art
would have had a reasonable expectation of success in doing so.
F. Patent Owner’s Takings and Appointments Clause Arguments
Patent Owner argues that “subjecting a patent effectively filed before
September 16, 2012 (when the relevant provisions of the Leahy-Smith
America Invents Act went into effect) to inter partes review is an
impermissibly retroactive, unconstitutional taking” and “violates the Due
Process Clause of the Fifth Amendment by eviscerating the Patent Owner’s
substantive vested rights.” PO Resp. 49; see PO Sur-reply 24. We decline
to consider Patent Owner’s constitutional challenge as the Federal Circuit
addressed this issue in Celgene Corp. v. Peter, 931 F.3d 1342, 1362–63
(Fed. Cir. 2019).
Patent Owner also argues that “inter partes review violates the
Appointments Clause of the U.S. Constitution” and “notwithstanding the
Federal Circuit’s recent opinion in Arthrex, the ‘statutory limitations on the
removal of [Administrative Patent Judges]’ under Title 5 are not severable
by the Federal Circuit.” PO Resp. 49 (citing Arthrex, Inc. v. Smith &
Nephew, Inc., 941 F.3d 1320, 1338 (Fed. Cir. 2019), cert. granted sub nom.
United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020)). We
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decline to consider Patent Owner’s Appointments Clause challenge as the
Federal Circuit addressed this issue in Arthrex, 941 F.3d at 1325, 1337–38.
III. CONCLUSION11
Petitioner has shown by a preponderance of the evidence that
claims 1–12, 20, and 21 of the ’128 patent would have been obvious.
IV. ORDER
For the foregoing reasons, it is
ORDERED that claims 1–12, 20, and 21 of the ’128 patent have been
proven to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
In summary:
11 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims
35
U.S.C. §
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2, 5,
20, 21
103(a) Martin, Steiner 1, 2, 5, 20, 21
3 103(a) Martin, Steiner,
Tamai
3
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4 103(a) Martin, Steiner,
Trovato
4
6 103(a) Martin, Steiner,
Anagnostopoulos,
Tamai
6
7–11 103(a) Martin, Steiner,
Obradovich
7–11
12 103(a) Martin, Steiner,
Obradovich, Hurst
12
Overall
Outcome
1–12, 20, 21
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Patent 7,036,128 B1
45
PETITIONER:
Naveen Modi
Joseph E. Palys
Daniel Zeilberger
Arvind Jairam
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
danielzeilberger@paulhastings.com
arvindjairam@paulhastings.com
PATENT OWNER:
Steven W. Hartsell
Alexander E. Gasser
Sarah E. Spires
SKIERMONT DERBY LLP
shartsell@skiermontderby.com
agasser@skiermontderby.com
sspires@skiermontderby.com
