Samsung Electronics Co., Ltd.v.Black Hills Media, LLC

Patent Trial and Appeal Board

Oct 21, 2015

09658671 (P.T.A.B. Oct. 21, 2015)

Trials@uspto.gov Paper 54
Tel: 571-272-7822 Entered: October 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., and
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
and
LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
ELECTRONICS MOBILECOMM U.S.A., INC.
Petitioner,
v.
BLACK HILLS MEDIA, LLC,
Patent Owner.
_______________

Case IPR2014-00735
Case IPR2015-00336
Patent 6,618,593 B1
_______________

Before BRIAN J. MCNAMARA, DAVID C. MCKONE,
and PETER P. CHEN, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Samsung Electronics Co., Ltd. filed a Corrected Petition (Paper 4,
“Pet.”) to institute an inter partes review of claims 1, 4, 7, 10, and 13–21 of
U.S. Patent No. 6,618,593 B1 (Ex. 1007, “the ’593 patent”). Samsung
Electronics America, Inc., and Samsung Telecommunications America,
LLC, are identified as real parties-in-interest. Pet. 1. Black Hills Media,
LLC (“Patent Owner”) filed a Preliminary Response (Paper 11,1 “Prelim.
Resp.”). Pursuant to 35 U.S.C. § 314, in our Decision to Institute, we
instituted this proceeding as to all of the challenged claims of the ’593
patent. Paper 18 (“Dec.”)
After Samsung Electronics Co., Ltd., filed its Petition, LG
Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
MobileComm U.S.A., Inc., filed a petition (Case IPR2015-00336 (“the ’336
proceeding”), Paper 2) and a motion to join the ’336 proceeding to this
proceeding (Case IPR2015-00336, Paper 3). We granted the motion for
joinder, instituting the ’336 proceeding on grounds identical to those in this
proceeding. Paper 31. We refer to the petitioners in the joined proceeding
collectively as “Petitioner.”
After the Decision to Institute, Patent Owner filed a Patent Owner
Response (Paper 35, “PO Resp.”), and Petitioner filed a Reply to the Patent
Owner Response (Paper 40, “Reply”). An oral hearing was held on July 28,
2015. Paper 53 (“Tr.”).
1 Unless otherwise noted, paper numbers refer to papers filed in IPR2014-
00735.

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Petitioner relies on the testimony of Stephen B. Heppe, D.Sc.
(Ex. 1005, “Heppe Decl.”; Ex. 1014, “2nd Heppe Decl.”) in support of its
contentions. Patent Owner relies on the testimony of Ivan Zatkovich
(Ex. 2017, “Zatkovich Decl.”) in support of its contentions.
We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
challenged claims. Based on the complete record, Petitioner has
demonstrated, by a preponderance of the evidence, that all of the challenged
claims are unpatentable.

B. Related Matters
The ’593 patent has been asserted against multiple defendants in
Black Hills Media, LLC v. Samsung Electronics Co., Ltd., No. 2-13-cv-
00379 (E.D. Tex.). Pet. 1; Paper 7, 2.
The ’593 patent also is at issue in Black Hills Media, LLC v. LG
Electronics, Inc., No. 1:13-cv-00803 (D. Del.), and Black Hills Media, LLC
v. Sharp Corp., No. 1:13-cv-00804 (D. Del.). Paper 7, 2.
The ’593 patent is the subject of an investigation before the United
States International Trade Commission (“ITC”), Certain Digital Media
Devices, Including Televisions, Blu-Ray Disc Players, Home Theater
Systems, Tablets and Mobile Phones, Components Thereof and Associated
Software, Inv. No. 337-TA-882 (“ITC investigation”). Pet. 1; Paper 7, 2. In
the ITC investigation, the Administrative Law Judge determined that certain
claims of the ’593 patent are invalid and not infringed. Initial
Determination, Inv. No. 337-TA-882, at 462 (Aug. 6, 2014).

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C. References Relied Upon
Petitioner relies upon the following prior art references:
Ex. 1003 Degnbol WO 00/22860 Apr. 20, 2000
Ex. 1008 DeLorme US 5,948,040 Sept. 7, 1999

D. The Asserted Grounds
We instituted this proceeding based on the following specific grounds
(Dec. 26–27):
Reference(s) Basis Claim(s) Challenged
Degnbol § 103(a) 1, 4, 7, 10, 13, 14,
and 16–21
Degnbol and DeLorme § 103(a) 15

E. The ’593 Patent
The ’593 patent is directed to a system for matching mobile
communication devices (e.g., cellular telephones) using location and profile
information. Ex. 1007, Abstract. Figure 1, reproduced below, illustrates an
example:

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Figure 1 is a block diagram of a mobile telecommunications network.
As shown in Figure 1, first mobile communications device 17 and
second mobile communications device 19 communicate with mobile
telecommunications network 15 over wireless communications links 18 and
20, respectively. Id. at 5:38–43. Mobile telecommunications network 15 is
connected to central computer server 25, which can be, for example, a
personal computer or an internet server. Id. at 5:60–66.
Each mobile communication device has associated with it a data
structure, the data in the structure including a location of the device (e.g.,
Global Positioning System (“GPS”) coordinates), a receive/transmit status,
and profile/preference data. Id. at 6:42–7:31. In one example, “the receive
status data consists of a toggle bit within the wireless data stream transmitted
over the wireless communications links that indicates whether the associated
mobile communications device is accepting data or requests from other

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mobile communications devices or the central server 25” (id. at 6:62–67),
and the transmit status “indicates to the mobile communications device
itself, whether requests or data should be sent to other mobile
communications devices or to the central server” (id. at 7:1–4). The
profile/preference data can include characteristics of the device’s user (e.g.,
that the user is a manager in the Networking group at Xerox Corp.) and
criteria for identifying other users (e.g., a preference to match with other
managers at Xerox in a certain radius). Id. at 7:32–46. The data structures
may be stored on the mobile communications devices or on the central
server. Id. at 6:44–50.
In operation, central server 25 analyzes the profile/preference data of
first and second mobile communications devices 17, 19 to determine
whether they match; if they match, the central server examines the
transmit/receive statuses of the devices to determine whether both devices
permit them to be notified of the other; and, if so, the central server
determines if each device is within a radius specified by the other. Id. at
8:54–9:2, Fig. 3. If the users of the two devices are close enough to one
another and their profiles match, central server 25 causes locating
information to be transmitted to either or both of the two devices. Id. at 9:3–
8. “Such locating information may include either graphic or textual
information and may be in any known format, e.g. a graphical map, textual
directions, a video of the actual route to be traveled etc. Locating
information may also be the raw GPS determined data.” Id. at 9:8–12.

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Claim 7, reproduced below, is illustrative of the claimed subject
matter (additional paragraphing supplied):
7. A system for matching users of mobile
communications devices comprising:
a first mobile communications device for
transmitting information defining a location
of the first mobile communications device;
a second mobile communications device for
transmitting information defining a location
of the second mobile communications
device and a user sending status; and
a central unit having a processor coupled to a
memory,
the central unit capable of communicating
with the first mobile communications
device over a first wireless
communications link and with the
second mobile communications
device over a second wireless
communications link,
the memory storing a first user profile
including information associated with
a user of the first mobile
communications device and a second
user profile including information
associated with a user of the second
mobile communications device,
wherein the central unit receives the user
sending status from the second mobile
communications device and the
information defining the locations of
the first and the second mobile
communications devices and wherein
the processor receives the first and the

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second user profiles to match
information of the users and,
if there is a match and depending upon the
user sending status, effects the
transmission to the first mobile
communications device of locating
information based upon the
information defining the locations of
the first and the second mobile
communications devices.

II. ANALYSIS
A. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278 (Fed. Cir. 2015). Claim terms generally are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
In the Decision to Institute, we addressed the constructions of the
following terms:
Claim Term Construction in Decision to Institute
“locating information” (claims
1, 4, 7)
“information that indicates that a
matching and available device is in
proximate relation to another.” Dec. 10.
“based upon the information
defining the locations of the
first and the second mobile
communications devices”
(claims 1, 4, 7)
No express construction. Dec. 10–11.

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Claim Term Construction in Decision to Institute
“user sending status” (claim 7) “information indicating whether data
should be sent to other mobile
communications devices.” Dec. 11–12.
“locating information is
updated to track a movement of
at least one of the first and the
second mobile communications
devices” (claim 17)
“locating information is updated to
indicate a change in position of at least
one of the first and the second mobile
communications devices.” Dec. 13.

Neither party challenges our construction of “locating information is
updated to track a movement of at least one of the first and the second
mobile communications devices” (Dec. 13), and we maintain that
construction based on the full record.
In its Response, Patent Owner disputes our constructions of “locating
information,” “based upon the information defining the locations of the first
and the second mobile communications devices,” and “user sending status.”
PO Resp. 11–22.

1. “locating information” and “based upon the information
defining the locations of the first and the second mobile
communications devices”
In the Petition, Petitioner did not provide an express construction of
“locating information.” See Pet. 10–11. Patent Owner, however, responded
that “locating information” is “information that is usable to arrive at a
location.” Prelim. Resp. 10. In the Decision to Institute, we disagreed with
Patent Owner and construed the term to mean “information that indicates
that a matching and available device is in proximate relation to another.”
Dec. 10.

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In the Decision to Institute, we relied, in part, upon the ’593 patent’s
description of an example of the decision-making process executed by
central server 25 in determining whether to send locating information to
mobile device. Dec. 1–8; Ex. 1007, 8:54–46, Fig. 3. In that example,
central server 25 compares the profile/preference data of two mobile
devices, examines their respective transmit and receive statuses, and
determines whether the first mobile device is within a certain distance of the
second mobile device. Ex. 1007, 8:56–9:2. If the profiles match, the
statuses of the devices permit communication, and the second mobile device
is within the certain distance, then
central server 25 continues with step 315 and causes locating
information to be transmitted to either or both of the first and
second mobile communications devices 17 and 19 indicating
that a “matching” and “available” mobile communications
device is in proximate relation to another. Such locating
information may include either graphic or textual information
and may be in any known format, e.g. a graphical map, textual
directions, a video of the actual route to be traveled etc.
Locating information may also be the raw GPS determined
data.
Ex. 1007, 9:3–12 (emphasis added). We determined that this passage
describes “locating information” as information that indicates that a
matching and available device is in proximate relation to another. Dec. 8.
We understood the reference to “e.g., a graphical map, textual directions, a
video of the actual route to be travelled etc.,” to be non-limiting examples of
locating information. Id.
In its Response, Patent Owner argues that we misread the
Specification. PO Resp. 13. According to Patent Owner, “[t]he fact that
locating information can indicate that ‘a matching and available device is in

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proximate relation to another’ is merely a consequence that follows from
receipt of the ‘locating information.’” Id. (quoting Ex. 1007, 9:3–12). Put
differently, Patent Owner argues that the phrase “indicating that a
‘matching’ and ‘available’ mobile communications device is in proximate
relation to another” (Ex. 1007, 9:6–8) does not describe “locating
information” itself, but rather the effect of the information’s transmission.
Patent Owner contends that locating information must be “usable to
arrive at a location,” and finds support for this contention in the second part
of the above-cited passage, namely, “locating information may include either
graphic or textual information and may be in any known format, e.g. a
graphical map, textual directions, a video of the actual route to be traveled
etc. Locating information may also be the raw GPS determined data.” PO
Resp. 11–12 (citing Ex. 1007, 9:8–12). Patent Owner further points to
examples in the Specification it contends use locating information to arrive
at a location. Id. at 12 (citing Ex. 1007, 10:50–59 (central server transmits
data to a male teenager “indicating a matching female teenager has been
found”; “the seeking male teenager may receive the location and/or the
personal information for the matching female teenager”), 11:9–39 (central
server selects from a predetermined list a convenient meeting place for
meeting attendees based on “instantaneous location data”, and “transmits a
message to each of the mobile communications devices . . . indicating the
time and the location of the meeting”), 11:46–57 (when a first truck is in a
certain proximity to a second truck, sending a message to the two truck
drivers “indicating a convenient meeting place”), 15:27–37 (sending
information to a lost child’s mobile device “indicating that they have left the
fixed boundary of the [amusement] park, or other confinement area specified

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by the parent” and, “[a]dditionally, the child’s mobile communications
device may be provided with the location of the parent based on the location
data 421 associated with the second mobile communications device”)).
In reply, Petitioner points to additional examples in which messages
sent to the mobile devices do not include information usable to arrive at a
specific location. Reply 4–5 (citing Ex. 1007, 13:20–46 (“the information
transmitted to the first mobile communication device may include a data that
the device is inside or outside the distance 440 of fixed point 400”), 14:22–
32 (“central server 25 continues with step 515 and causes locating
information to be transmitted to either or both of the first and second mobile
communications devices 17 and 19 indicating that a ‘matching’ and
‘available’ mobile communications device is in proximate relation to the
fixed point or is disposed inside/outside the fixed boundary”). Petitioner
further points to Patent Owner’s “amusement park” embodiment (Ex. 1007,
15:14–37) as an example of locating information that indicates, to a child’s
phone, a proximity relative to a boundary. Reply 5–6. We note that the
location of the parent is described as additional information that may be
provided.
We agree with Petitioner that the Specification describes examples of
“locating information” that indicates that a mobile device is within a certain
proximity but without specifying a specific location. Indeed, in this Figure 5
embodiment (Ex. 1007, 14:22–32), the term “locating information” is used
to describe information that is not usable to arrive at a specific location. We
conclude that a construction excluding such embodiments would be
unreasonably narrow. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d
1338, 1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred

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embodiment is rarely, if ever correct and would require highly persuasive
evidentiary support.” (internal quotation marks and citation omitted)). We
note that Patent Owner does not offer persuasive evidence that the
Specification defines “locating information” or excludes or disavows
locating information that is not usable to arrive at a specific location.
Patent Owner also argues that our construction “ignores the word
‘locating’” and “conflates the notions of ‘locating information’ and
‘proximity/profile data.’” PO Resp. 13. Patent Owner argues that
proximity/profile data is distinct from locating information. Id. at 13–16.
We agree with Patent Owner that locating information is distinct from
proximity/profile data, but disagree that our construction conflates the two.
According to the ’593 patent, in determining whether to send locating
information, a central server evaluates profile data and proximity data to
determine whether there is a match. Ex. 1007, 8:54–9:2. Locating
information is not merely the profile and proximity data, nor is
proximity/profile data sent to the mobile devices. Rather, the central server
sends to a mobile device locating information that indicates to the mobile
device that the profile and proximity data have been successfully matched.
Id. at 9:3–8. Our construction of “locating information” is directed to the
information transmitted by the central server, rather than the information
received by the central server.
As to reading the word “locating” out of “locating information,”
Petitioner, in reliance on Dr. Heppe, argues that “information, sent as a
consequence of a proximity test, is ‘locating information’ because
information about a device’s proximity to known locations provides
information about that device’s location.” Reply 3 (quoting Ex. 1014 ¶ 2).

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We credit Dr. Heppe’s testimony and agree with Petitioner. We conclude
that our construction neither ignores “locating” nor conflates “locating
information” with proximity/profile data.
Neither party proposes a construction of “based upon the information
defining the locations of the first and the second mobile communications
devices.” Nevertheless, Patent Owner argues that “locating information” is
further qualified by this claim language. PO Resp. 17. According to Patent
Owner, in reliance on Mr. Zatkovich’s testimony, “[l]ocation information
must include information about the locations of at least two devices.”
Id. (citing Ex. 2017 ¶ 49). The plain language of the claims recites “based
on,” rather than “includes.” Patent Owner does not persuasively argue that
information “based on” the locations of two devices necessarily must
include the two locations. Indeed, in the truck example Patent Owner cites
(Id. at 6 (citing Ex. 1007, 11:46–57)), the information Patent Owner
identifies as locating information is a transmission by the central server of a
convenient meeting place, which, presumably, includes the location of
neither truck.
Mr. Zatkovich testifies that in instances such as textual directions and
a video of the route to be travelled, “the ‘locating information’ is based on
and derived from the locations of both devices.” Ex. 2017 ¶ 49. We agree.
Nevertheless, information that indicates to a user that a second user is within
a certain proximity of a first user also is based on and derived from the
locations of both devices.
We note that in both the teenager and amusement park examples
Patent Owner cites, the Specification describes sending to one party the
location of the other party. Ex. 1007, 10:53–55 (“the seeking male teenager

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may receive the location and/or the personal information for the matching
female teenager”), 15:31–33 (“Additionally, the child’s mobile
communications device may be provided with the location of the parent
based on the location data 421 associated with the second mobile
communications device.”). This information, however, need not be based on
the locations of both devices. Indeed, in the amusement park example, the
location of the parent is based only on “the location data 421 associated with
the second mobile communications device.” Id. at 15:31–33. In the
teenager example, the only information transmitted by the central server that
is based on the locations of both devices is the information “indicating a
matching female teenager has been found.” Id. at 10:50–53.
Lastly, Petitioner contends that Patent Owner is incorrect to exclude
telephone numbers from “locating information.” Reply 6. Patent Owner
cites to the Initial Determination in the ITC investigation, which adopted
Petitioner’s proposed construction therein of “locating information”
(“information that enables a user to contact or find another device or
location”), a construction that Petitioner does not advance in this proceeding.
Id. (citing Ex. 1016, 383). To the extent that Petitioner proposes that we
adopt in this proceeding the construction from the ITC investigation,
Petitioner does not persuasively support that construction on the record of
this proceeding. Moreover, as it is not necessary to determine whether a
telephone number indicates that a matching and available device is in
proximate relation to another in order to determine whether the prior art
renders obvious the challenged claims, we take no position on whether a
telephone number is “locating information.” See Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms

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need be construed that are in controversy, and only to the extent necessary to
resolve the controversy.”) (citation omitted).
On the complete record, we maintain our construction of “locating
information.” We further conclude that “based upon the information
defining the locations of the first and the second mobile communications
devices” requires no express construction.

2. “user sending status”
Petitioner proposes construing “user sending status” to mean
“information indicating whether data should be sent to other mobile
communications devices.” Pet. 5–6. In the Preliminary Response, Patent
Owner argued that this term means “information indicating whether the
user’s device is configured to send data.” Prelim. Resp. 13–14. In the
Decision to Institute, we adopted Petitioner’s proposal. Dec. 12.
In its Response, Patent Owner renews its proposal, arguing that “a
sending status for a mobile communications device must indicate whether
the mobile communications device is able to send data to other mobile
communications devices or to the central server.” PO Resp. 19. Patent
Owner cites to a passage in the Specification describing a “transmit status,”
which Patent Owner equates to a “user sending status.” Id. at 20–21. In
particular, the Specification states that “[t]he transmit status data . . .
indicates to the mobile communications device itself, whether requests or
data should be sent to other mobile communications devices or to the central
server.” Ex. 1007, 6:60–7:4. Patent Owner reads this to mean that “[t]he
transmit status data (i.e. user sending status) controls whether the data is
sent from the communications device to the central server, and subsequently

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to other communications devices.” Id. at 21. Patent Owner relies on
Mr. Zatkovich, who testifies that “[t]he purpose of the user sending status in
this example is to enable and disable the transmission of locating
information from device 19 to the central server.” Id. at 21–22 (quoting
Ex. 2017 ¶ 56). Patent Owner argues that “‘user sending status’ is a privacy
control akin to ‘do not track,’ which allows a user to opt out of transmitting
location information altogether.” Id. at 22.
In response, Petitioner argues that the user sending status controls the
transmission of locating information from the central server2 to another
mobile device. Reply 16–17 (citing Ex. 1007, 3:17–42 (“wherein the central
unit receives the user sending status from the second mobile
communications device and the information defining the locations of the
first and the second mobile communications devices . . . and depending upon
the user sending status, effects the transmission to the first mobile
communications device of locating information based upon the information
defining the locations of the first and the second mobile communications
devices”). Because this example includes sending the user sending status to
the central server, it is inconsistent with Mr. Zatkovich’s testimony that the
user sending status prevents any transmission to the central server.
To the extent that Patent Owner’s characterization of the
Specification’s description of “transmit status” is accurate, it is not
consistent with how the term “user sending status” is used in claim 7.
Specifically, claim 7 recites that “the central unit receives the user sending
2 The Specification generally uses the term “central server,” while the claims
generally use the term “central unit.” The parties do not argue that these
terms should be accorded different meanings. Reading the claims in light of
the Specification, we understand these terms to be synonymous.

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status from the second mobile communications device and the information
defining the locations of the first and the second mobile communications
devices” and “if there is a match and depending upon the user sending
status, effects the transmission to the first mobile communications device of
locating information.” As Petitioner points out (Reply 18), claim 7 specifies
that the central unit receives from the second mobile communications device
both a user sending status and information defining location of the second
mobile communications device. The user sending status is used by the
central unit, along with the information defining the device’s location, to
determine whether to send locating information to another device. Patent
Owner’s proposed construction, and the explanation provided by
Mr. Zatkovich, would exclude the second communications device from
transmitting to the central server the very information specifically recited in
claim 7. Because Mr. Zatkovich’s testimony, specifically his statement that
“[t]he purpose of the user sending status in this example is to enable and
disable the transmission of locating information from device 19 to the
central server,” Ex. 2017 ¶ 56, is directly contradicted by the language of
claim 7, the testimony lacks credibility.
Moreover, as explained in the Decision to Institute (Dec. 11–12), the
Specification describes embodiments in which the transmit status is
transmitted to the central server and controls whether the central server
transmits locating information to another device. Ex. 1007, 6:44–50, 8:1–7,
9:3–8, 10:50–59, 11:24–29. These passages provide additional support for
Petitioner’s proposed construction of “user sending status.” Patent Owner’s
proposed construction would exclude these embodiments.

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At the hearing, Patent Owner argued that:
Whereas, petitioner asserts that user receiving status deals with
the receipt of data or requests from other communications
devices or the central server, that’s important, or the central
server, . . . petitioner’s proposed construction for using sending
status plainly eliminates this reference to the central server. By
conveniently omitting this reference, the petition unreasonably
broadens the scope of this claim and ignores the teachings of
the Drutman [’593] patent specification as to the proper claim
scope.
Tr. 27:11–19. We are not persuaded. First, Patent Owner’s hearing
argument that the central server receives a user sending status is at odds with
its Response argument that the user sending status prevents any transmission
to the central server. Second, claim 7 itself recites the role of the central
unit, including that the central unit “receives . . . the user sending status” and
“depending upon the user sending status,” effects the transmission of
locating information. Thus, the role of the central unit is specified by
claim 7 regardless of whether it is included explicitly within the construction
of “user sending status.”
On the complete record, including the plain language of claim 7 and
the description in the Specification, we maintain our construction of “user

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sending status” as “information indicating whether data should be sent to
other mobile communications devices.”3

B. Asserted Grounds of Unpatentability
1. Obviousness over Degnbol
A 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.” We resolve the question of obviousness 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;4 and (4) objective evidence of
3 At the oral hearing, Patent Owner admitted that it did not include in its
Response any patentability argument distinguishing the prior art under its
proposed construction of “user sending status.” Tr. 13:7–14:16. Instead,
Patent Owner points to the testimony of Mr. Zatkovich, which Patent Owner
admits is not cited in its Response. Id. (citing Ex. 2017 ¶¶ 81–89). Even if
we were to adopt Patent Owner’s proposed construction of “user sending
status,” Patent Owner has waived any patentability arguments based thereon,
as they were not raised in the Response. See, e.g., Paper 27 (Scheduling
Order), 2–3 (“The patent owner is cautioned that any arguments for
patentability not raised in the response will be deemed waived.”).
4 Petitioner, citing Dr. Heppe’s testimony, contends that a person of ordinary
skill in the art “would typically have at least a Bachelor of Science degree in
electrical engineering, computer engineering, computer science, or
equivalent thereof, and one to two years of experience in the field of
computer communications, telecommunications, and/or communications
networking.” Pet. 6 (citing Ex. 1005 ¶ 3). Patent Owner neither contends
that this is incorrect nor proposes an alternative. On the full record, we
adopt Petitioner’s statement of the level of skill in the art.

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nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
Petitioner contends that claims 1, 4, 7, 10, 13, 14, and 16–21 would
have been obvious over Degnbol. Pet. 3. For the reasons given below, we
agree.

a. Overview of Degnbol
Degnbol describes a system that automatically notifies a first
communication unit (such as a cellular telephone) when a second
communication unit matching user-specified parameters enters a pre-
determined area or proximity. Ex. 1003, 1:7–11. Figure 1, reproduced
below, illustrates an example:
5 The record does not contain any evidence of secondary considerations.

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Figure 1 illustrates the operation of a cellular network. Id. at 20:23–24.
User A and User B are subscribers to the network and each carries a
communications device such as a data-enabled cellular phone. Id. at 20:24–
30. The network knows the position of each of the cellular phones through
network-based or mobile-based position calculations, for example, by
triangulation methods or by GPS. Id. at 5:7–9, 20:30–32.
As shown in Figure 1, a processor is connected to the network and a
database is, in turn, connected to the processor. Users A and B provide
profile information to the database. Id. at 20:25–26. The profile information
can include information about which other users can be contacted on behalf

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of the user. For example, “User A’s profile includes a desire to be alerted
when User B is in his vicinity; User B’s profile includes a permission to
notify User A of his whereabouts.” Id. at 20:26–28.
An example of profile data is illustrated in Table 1 (Ex. 1003, 22),
reproduced below:

Table 1 is an example user entry in a database containing user name, device
identification (Unit ID), and various user preferences. Id. at 21:23–29. In
the first row of this example, user “JohnS” has indicated that he is to be
alerted only from 10 A.M. to 2 P.M.,6 if any user matching certain interests
(sports, basketball, and the Chicago Bulls) is within 2 km of John’s phone.
Id. at 22:4–5. The “Permissions” column indicates that any user can be
alerted to JohnS’s presence during this time. Id. at 22:6–8. In the second
row, JohnS has indicated that he is to be alerted only from 5 P.M. to 8 P.M.
if JulieS reaches a particular map point. Id. at 22:5–6. According to the
permissions, only JulieS can be alerted to JohnS’s presence during this time.
6 The heading “Altering Times” should be “Alerting Times.” See Ex. 1003,
22:4–6.

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If the server identifies a profile match between two users, the users’
phones are in the specified proximity, and the users have indicated
permission to send to and receive from each other, the server generates user
alert messages to one or both of the users. Id. at 12:25–29, 13:10–13,
18:29–33.
The generated message may comprise text, e.g. information
about the distance between user “A” and user “B”, graphics,
such as an image or an icon, a map or diagram with a pointer
showing the location of the user, a video clip, sound, such as
voice, a fragrance, light emission, and/or movements, such as
vibration, or any combination thereof.
In an optional implementation, closer proximity decreases the
intervals between alert signals (i.e. light or sound emission),
resulting in an escalation of signal frequency as users approach
each other.
Id. at 5:16–24.
Degnbol also describes an “incognito” mode, in which a user can
disable and re-enable his or her participation in the system. Id. at 13:4–6. In
this mode, the server will not send messages regarding the user to other
users; however, the user may be alerted of other users’ presences. Id. at
13:13–15.

b. Claim 7
Petitioner contends that Degnbol’s cellular phones A and B are a “first
mobile communications device” and a “second mobile communications
device,” with each “transmitting information defining a location of” the
device, as recited in claim 7. Pet. 41. Petitioner relies on disclosure in
Degnbol identifying “[r]eporting of current unit position” as one of the
fundamental elements of Degnbol’s invention and description stating that the

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position calculation can be “network-based or mobile-based.” Id. (citing
Ex. 1003, 12:17–29, 20:29–32).
Patent Owner argues that Degnbol teaches determining the locations
of cellular phones by deriving or inferring, using triangulation techniques,
the positions of the phones from the locations of the cellular towers that
receive signals from the phones. PO Resp. 26–28. Patent Owner does not
connect this argument to any contention regarding patentability over
Degnbol. Nevertheless, we understand Patent Owner’s contention to be that
Degnbol does not teach “transmitting information defining a location of” a
device.
Degnbol describes several techniques for determining the location of
cellular phones, including using GPS technology:
The simplest form of location determination is based on the fact
that all cellular networks are built of a number of “cells”, each
covering an area ranging from a few hundred meters to several
miles. Users of the system are constantly located by the
systems universal tracking function. This means the individual
users are tracked by cell. Although this method is not very
accurate and precision varies with cell size, it may be sufficient
for some embodiments of the system described in this
document.
More precise systems use technologies such as time difference
of arrival, (TDOA), power/signal attenuation, angle of arrival
(AOA), Radio Signal Mapping, GPS (Global Positioning
System) or a combination to establish the position of the user.
These systems can be purchased from third-party providers and
installed in existing cellular networks. The only requirement
for use in this system is that they can provide a streaming real-
time or near real-time feed of user location data to a database.
Ex. 1003, 1:22–34 (emphasis added). Degnbol further explains that “[t]he
determination of the position of one or more units in the set may comprise

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the use of several determination methods, such as triangulation methods,
GPS, AOA, TDOA, Radio Signal Mapping, power/signal attenuation or a
combination.” Id. at 5:7–9 (emphasis added). Degnbol also distinguishes
between “network-based” and “mobile-based” position calculation: “Each
carries a communications device (e.g., data-enabled cellular phone), the
position of which is known to the wireless network. Whether the position
calculation is network-based or mobile-based, as illustrated here, is
irrelevant to the invention.” Id. at 20:29–32.
Mr. Zatkovich analyzes Degnbol and testifies that: “[i]nstead of a
communications device transmitting data defining its own location, these
systems mentioned in Degnbol know the positions of the network’s cellular
tower and use this information to derive the location of a communications
device. To summarize, Degnbol’s cellular tower infers the location of
communications devices.” Ex. 2017 ¶ 63. We understand Mr. Zatkovich to
be testifying that Degnbol’s reference to “GPS” is a reference to the GPS
coordinates of the cellular towers, rather than the GPS coordinates of the
mobile telephones. Mr. Zatkovich does not cite to evidence other than
Degnbol in reaching this conclusion. In reply, Dr. Heppe testifies, “a person
of ordinary skill would understand Degnbol to teach (among other things) a
‘mobile-based’ position determination method with GPS receivers in (or
associated with) the mobile devices.” Ex. 1014 ¶ 15. Dr. Heppe also relies
exclusively on Degnbol’s disclosure in reaching his conclusion.
Patent Owner argues that Degnbol has no explicit disclosure of mobile
devices including GPS transceivers and that Degnbol’s distinction between
“network-based” and “mobile-based” position calculation is “cryptic.” PO
Resp. 27–28. The logical reading of Degnbol’s disclosure is that mobile-

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based methods, such as tracking a mobile phone’s position through receipt
of GPS information from the phone, are distinct from “network-based”
techniques, such as triangulation. See, e.g., Ex. 1003, 5:7–9 (“several
determination methods, such as triangulation methods, GPS . . .”). As
Dr. Heppe points out (Ex. 1014 ¶ 15), Figure 1 of Degnbol depicts a wireless
network receiving “position reports” from users. To the extent there is any
ambiguity, this is persuasive evidence that Degnbol’s cellular phones
transmit information about their positions, such as GPS coordinates, to a
central server. In consideration of all of this evidence, we find that Degnbol
teaches first and second mobile communications devices “for transmitting
information defining a location of” each device.
Claim 7 also recites a second mobile communications device for
transmitting “a user sending status.” Petitioner, relying on Dr. Heppe
(Ex. 1005 ¶¶ 26–28), contends that the “Permissions” field of the profile
data shown in Table 1 of Degnbol is a user sending status. Pet. 19. The
permissions information is sent to the central server for storage in the user’s
profile. Id. Petitioner argues that Degnbol teaches the communications
device transmitting a user sending status (i.e., the Permissions field), as
recited in claim 7. Id.
Patent Owner does not argue that Degnbol fails to teach a “user
sending status” under our construction. Moreover, as explained above,
Patent Owner concedes that it does not present in its Response any
patentability arguments based on its proposed construction of “user sending
status” (which we decline to adopt, for the reasons given above).
We find that this Permissions field is information indicating whether
data should be sent to other mobile communications devices, i.e., a user

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sending status. Degnbol explains that a cellular phone, “User ‘B’,” has
“previously provided profile information to the system, now stored in the
system database” and that “User ‘B’’s profile includes a permission to notify
User ‘A’ of his whereabouts.” Ex. 1003, 20:23–28. This is shown as the
“Permissions” field of the profile data of Table 1. Id. at 22. Upon a profile
match and an evaluation of the permissions, “the processor generates an alert
message to User ‘A’.” Id. at 20:34–21:6.
For an additional example of a “user sending status,” Petitioner relies
on Degnbol’s “incognito” mode of operation. Pet. 41–42. Petitioner argues
that, when a user’s communications device is in Degnbol’s “incognito”
mode, the system will not match the user with any other user. Id. at 18.
According to Petitioner, a skilled artisan would have understood that one
possible way to implement the “incognito” mode would have been to modify
the users listed in the “Permissions” field. Id. at 19 (citing Ex. 1005 (Heppe
Decl.) ¶ 28). In particular, Petitioner argues that it would have been obvious
to a skilled artisan to use information in the user profile to represent that a
device is presently “incognito.” Id. at 21 (citing Ex. 1005 ¶ 29). Petitioner
presents this alternative if we were to find that the Permissions field, by
itself, is not a user sending status. Id.
Patent Owner contends that Petitioner has failed to articulate a case
for obviousness, arguing that “Petitioner’s claim charts provide numerous
citations to elements purportedly found in Degnbol but at no point does
Petitioner identify what is missing in Degnbol and explain why it would be
obvious to modify Degnbol to provide the missing element.” PO Resp. 30.
We disagree. Petitioner contends that Degnbol’s “Permissions” field, by
itself, is a “user sending status.” Pet. 19. While Petitioner does not concede

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that Degnbol’s “Permissions” field fails to teach a “user sending status,”
Petitioner argues that, to the extent we find the “Permissions” field alone
lacking, it would have been an obvious design choice to use this field to
implement Degnbol’s “incognito” feature. Id. at 18–19, 21; Ex. 1005 ¶¶ 28–
29.
While we find that the “Permissions” field, by itself, teaches a user
sending status (and Patent Owner does not argue to the contrary), we also
credit Dr. Heppe’s testimony that implementing an “incognito” mode
through use of Degnbol’s already existing “Permissions” field would have
been an obvious design choice. Implemented as such, this is another
example of a user sending status.
Claim 7 also recites that a central unit’s processor, upon determining a
match, effects the transmission of “locating information based upon the
information defining the locations of the first and the second mobile
communications devices.” According to Degnbol, “[w]hen a match is found
between the Personal Profiles of user ‘A’ and ‘B’ an alert is transmitted to
user ‘A’, user ‘B’, or both, depending on their respective preferences.”
Ex. 1003, 18:29–31. Petitioner contends that this alert is locating
information. Pet. 46–47. Petitioner, in particular, points to Degnbol’s
disclosure of an alert message, alerting “user ‘A’s’ communication device
when a user ‘B’ enters the proximity of user ‘A,’” and including
“information about the distance between user ‘A’ and user ‘B’, graphics,
such as an image or an icon, a map or diagram with a pointer showing the
location of the user, . . ., or any combination thereof.” Id. at 47 (quoting
Ex. 1003, 5:16–20, 18:27–33).

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Patent Owner contends that Degnbol’s alert message is not locating
information because it “merely indicates to a user that another user is ‘in the
vicinity,’” and, in any case, merely shows the location of “a user.” PO
Resp. 33. As a result, the alert is not “information that would enable one
user to arrive at the location of the other user.” Id. at 34. This argument is
based on Patent Owner’s proposed construction of “locating information,”
which we decline to adopt for the reasons stated in Section II.A.1 above.
Under our construction, we find that Degnbol’s alert message is information
that indicates that a matching and available device is in proximate relation to
another, i.e., locating information.
In sum, Petitioner has shown that each limitation of claim 7 is taught
in Degnbol. We also conclude that a skilled artisan would have made a
design choice to implement Degnbol’s “incognito” mode using the
“Permissions” field of Degnbol’s profile data. On the complete record,
Petitioner has shown, by a preponderance of the evidence that claim 7 would
have been obvious over Degnbol.

c. Claims 1, 4, 10, 13, 14, and 16–21
Independent claim 4 is similar to claim 7 except that, rather than
reciting a second mobile communications device for transmitting a user
sending status, claim 4 recites a first mobile communications device for
transmitting a “user receiving status” and recites that a match determination
depends, in part, on the user receiving status rather than a user sending
status. Claim 1 is similar to claim 4 except that it recites both first and
second mobile communications devices for transmitting user receiving
statuses. Petitioner contends that the “Alerting Time” field shown in

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Degnbol’s Table 1 discloses or would have taught a “user receiving status.”
Pet. 16–18, 25–26, 33–34. We agree with Petitioner that Degnbol’s
“Alerting Time” field is a “user receiving status.” Otherwise, Petitioner
advances the same evidence, discussed above for the limitations of claim 7
that overlap with those of claims 1 and 4. Id. at 24–40. Patent Owner
presents its arguments together for claims 1, 4, and 7, and does not present
arguments particular to claims 1 and 4. Upon consideration of this evidence,
we find that Degnbol teaches each limitation of claims 1 and 4.
Claims 10, 13, 14, and 16–20 are multiple dependent claims that
depend from any of claims 1, 4, and 7. Claim 21 depends from either of
claims 4 and 7. Patent Owner does not present separate arguments for
claims 10, 13, 14, and 16–21. We have considered the evidence presented in
the Petition, at 48–54, and make the following findings:
Degnbol’s web-based interface for entering preferences
(Ex. 1003, 11:1–3) is an example of “an input device for
inputting the profile information,” as recited in claim 10;
Degnbol’s “mobile telephone” (Ex. 1003, 4:27–31) is an
example of “a cellular phone,” one of the enumerated list
of devices recited in claim 13;
Degnbol’s “Position” field, specifying “lat:long” of a mobile
telephone (Ex. 1003, 22 (Table 2)) is an example in
which “the information defining the location of at least
one of the first mobile communications device and the
second mobile communications device includes . . .
coordinates,” as recited in claim 14;
Degnbol’s locating information can include “text,” “graphics,”
“a video clip,” and “sound” (Ex. 1003, 5:22–24),
examples showing the limitation of claim 16;
Regarding claim 17, Degnbol describes generating a message
that may comprise “sound, such as voice, a fragrance,
light emission, and/or movements, such as vibration” and

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that “[i]n an optional implementation, closer proximity
decreases the intervals between alert signals (i.e. light or
sound emission), resulting in an escalation of signal
frequency as users approach each other.” Ex. 1003,
5:16–24. This teaches “wherein the locating information
is updated to track a movement of at least one of the first
and the second mobile communications devices,” as
construed in Section II.A above;
Degnbol’s “information relating to the subject of interest,” sent
as part of an alert, is “additional information,” as recited
in claim 18. Degnbol describes obtaining this
information “using a web-based interface” (Ex. 1003,
15:21–23), which teaches that “the additional information
is obtained over the Internet,” as recited in claim 19;
Regarding claim 20, Degnbol’s “Users” field (Ex. 1003, 22
(Table 1)) teaches that the user profile information
“includes information identifying the user of the other
mobile communications device”; and
Degnbol’s description of generating a message showing “an
image or an icon, a map or diagram with a pointer
showing the location of the user” (Ex. 1003, 16:16–20)
teaches that “the locating information is locating
information for the second mobile communications
device,” as recited in claim 21.
On the complete record, Petitioner has shown, by a preponderance of
the evidence, that claims 1, 4, 10, 13, 14, and 16–21 would have been
obvious over Degnbol.

2. Obviousness over Degnbol and DeLorme
Claim 15 depends from each of claims 1, 4, and 7 and recites that “the
locating information includes a map, vectors, directions, and an address.”
Petitioner contends that claim 15 would have been obvious over Degnbol
and DeLorme. Pet. 3. For the reasons given below, we agree.

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a. Overview of DeLorme
DeLorme describes a computerized travel reservation information and
planning system that generates maps and directions. Ex. 1008, Abstract.
DeLorme’s system can generate output such as shown in Figure 1B,
reproduced below, which includes maps, a computed route, compass
directions, point-to-point distance, and driving directions (Ex. 1008, 20:63–
21:7):

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Figure 1B illustrates a “map ticket” travel plan output, which can be
electronic or in hard copy. Id. at 12:55–57. A map ticket can be transferred

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to an electronic device, including a mobile telephone or handheld device
with GPS capability. Id. 72:27–32.

b. Claim 15
Petitioner contends that a skilled artisan would have incorporated the
features of DeLorme’s map ticket, including a map, vectors, directions, and
an address, into Degnbol’s alert message. Pet. 55. According to Petitioner,
a skilled artisan would have recognized that including this additional
information would have made it easier for users to find specific locations.
Id. at 55–56. Dr. Heppe testifies that a skilled artisan would have
recognized the improvement provided by well-known presentation
techniques such as maps, arrows, and turn-by-turn directions, and would
have had a reasonable expectation of success. Ex. 1005 ¶¶ 37, 40.
Petitioner further argues that Degnbol and DeLorme describe systems using
similar hardware and that such a combination would have involved
combining known methods to yield predictable results. Id. at 57.
Degnbol itself teaches that messages sent to the mobile phones can
include “an icon, a map or diagram with a pointer showing the location of
the user.” Ex. 1003, 5:16–18. As explained above, skilled artisans would
have included experienced engineers and computer scientists. We are
persuaded that a skilled artisan would have recognized that incorporating the
additional detail shown in DeLorme’s description of a map ticket into
Degnbol’s alert messages would have provided a predictable improvement
and would have been within the level of skill in the art. We find that the
improved alert message would have included “a map, vectors, directions,
and an address.”

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On the complete record, Petitioner has shown, by a preponderance of
the evidence, that claim 15 would have been obvious over Degnbol and
DeLorme.

III. PETITIONER’S MOTION TO EXCLUDE
At his deposition, on redirect by Patent Owner, Mr. Zatkovich
testified regarding Degnbol’s “incognito” mode. Ex. 1017, 215:22–218:22.
Petitioner moves to exclude this redirect testimony as beyond the scope of
Mr. Zatkovich’s Declaration (Ex. 2017) and Petitioner’s cross examination.
Paper 43 (Mot. to Exclude), 1–3.
Patent Owner does not cite to or rely on this testimony. Accordingly,
we deny Petitioner’s Motion to Exclude as moot.

IV. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1, 4, 7, 10, 13, 14, and 16–21 would have been obvious over Degnbol
and that claim 15 would have been obvious over Degnbol and DeLorme.

V. ORDER
For the reasons given, it is
ORDERED that, based on a preponderance of the evidence, claims 1,
4, 7, 10, and 13–21 are held unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude
(Paper 43) is denied as moot; and

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FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of it must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER
Andrea Reister
Gregory Discher
COVINGTON & BURLING LLP
areister@cov.com
gdischer@cov.com

Dori Johnson Hines
Jonathan R. Stroud
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
dori.hines@finnegan.com
jonathan.stroud@finnegan.com

PATENT OWNER
Thomas Engellenner
Andrew Schultz
Reza Mollaaghbaba
George Haight
PAPPER HAMILTON LLP
engellennert@pepperlaw.com
schultza@pepperlaw.com
mollaaghababar@pepperlaw.com
haightg@pepperlaw.com

Andrew Crain
Robert Gravois
Kenneth Know
THOMAS | HORSTEMEYER, LLP
andrew.crain@thomashorstemeyer.com
robert.gravois@thomashorstemeyer.com
kenny.knox@thomashorstemeyer.com

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