XRS Corporation

Patent Trials and Appeals Board

Jun 8, 2021

IPR2021-00124 (P.T.A.B. Jun. 8, 2021)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Date: June 8, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PLATFORM SCIENCE, INC.,
Petitioner,
v.
XRS CORPORATION,
Patent Owner.

IPR2021-00124
Patent 7,043,365 B2

Before KEN B. BARRETT, NEIL T. POWELL, and
FREDERICK C. LANEY, Administrative Patent Judges.
POWELL, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. BACKGROUND
Platform Science, Inc. (“Petitioner”) filed a Petition for inter partes
review of claims 1–20 of U.S. Patent No. 7,043,365 B2 (Ex. 1001, “the
’365 patent”). Paper 2 (“Pet.”). XRS Corporation (“Patent Owner”) filed a
Preliminary Response. Paper 9 (“Prelim. Resp.”).
For the reasons provided below, we deny institution of inter partes
review.
B. RELATED PROCEEDINGS
The parties note that the ’365 patent is involved in Omnitronics, LLC
and XRS Corporation v. Platform Science, Inc., 20-cv-0958 JLS-MDD
(SDCA). Pet. 1; Paper 5, 2.
C. THE ’365 PATENT
The ’365 patent relates to position monitoring. Ex. 1001, 1:14–15.
Noting it is common to use vehicles to pick up and deliver goods and/or
people, the ’365 patent explains “[i]t is sometimes desirable to have a record
of the time and place of the performance of these tasks.” Id. at 20–23. The
’365 patent indicates that it also may be advantageous to know vehicle
position. Id. at 1:35–36.
The ’365 patent discloses using a proximity module “to determine the
position of a mobile client in relation to a predefined location.” Id. at 3:25–
28. The ’365 patent discloses “[a]n embodiment of the present invention is
illustrated in [Figure] 1].” Id. at 3:43–44. Figure 1 is reproduced below.
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Figure 1 shows map 100, on which pre-defined location 110 appears.
Id. at 3:44–45.
Destination circle 120 and tolerance circle 130 may surround pre-
defined location 110. Id. at 3:51–57. Destination circle 120 and tolerance
circle 130 may both be centered on pre-defined location 110. Id. Tolerance
circle 130 may have a larger radius than destination circle 120. Id.
The ’365 patent discusses an embodiment of a system in connection
with Figure 2. Id. at 2:56–57. Figure 2 is reproduced below.
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Figure 2 shows system 200, which “includes a host 210, a network 220, and
clients 230.” Id. at 4:23–24.
Host 210 may serve multiple functions. Host 210 may “monitor,
track, and collect information about the clients 230 over the network 220.”
Id. at 4:24–26. Host 210 may also “provide a communication system 240 to
provide a mechanism for the monitoring, tracking and collection of
information as well as provide a two-way communication channel between
the host 210 and the clients 230.” Id. at 4:26–31.
“[C]lients 230 may be mobile units.” Id. at 4:54. For example,
client 230 may be a truck. Id. at 7:17. A client version of communication
system 240 may be executed by clients 230, providing tracking, monitoring,
data collection, and communication functions. Id. at 4:58–61.
Communication system 240 may comprise a proximity module. Id. at 4:64–
65. Additionally,
The proximity module, once activated, may be configured to
provide an indication of when client 230 nears a selected
notification point (e.g., a location point, waypoint, destination,
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etc.). The proximity module may also be configured to provide
a frequent indication of how long the client 230 is near the
notification point and an indication of when the client 230 leaves
the proximity of the notification point.
Id. at 4:66–5:5.
In Figure 5, the ’365 patent shows an embodiment of an architecture
of the client system of Figure 2. Id. at 2:65–67. Figure 5 is reproduced
below.

Figure 5 shows “a block diagram of an architecture 500 of communication
system 240 shown in [Figure] 2 executing on client 230 in accordance with
an embodiment of the present invention.” Id. at 6:55–58.
Architecture 500 comprises “the communication system interface 510,
a monitor module 520, a client interface 530, a proximity module 540, and a
global position system (GPS) module 550.” Id. at 6:58–61. Communication
system interface 510 may serve as an interface for transmitting data and/or
commands between communication system 240 (see Figure 2) and monitor
module 520. Id. at 7:4–7. Monitor module 520 may collect information for
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transmission through communication system interface 510 to host
system 210. Id. at 7:11–13. Monitor module 520 may also interface with
proximity module 540. Id. at 7:21–22. GPS module 550 may supply
client 230’s latitude/longitude position. Id. at 7:27–29.
In connection with Figure 6, the ’365 patent discusses an example of a
method that proximity module 540 may follow. 7:37–39. Figure 6 is
reproduced below.

Figure 6 “illustrates a flow diagram for a method 600 for the proximity
module 540 shown in [Figure] 5.” Id. at 7:37–38.
In this method, once proximity module 540 has been activated,
proximity module 540 is in an idle state at step 605. Id. at 7:45–45–47. In
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step 610, proximity module 540 may “receive positional information (e.g.,
latitude/longitude) of the current position of the client 230.” Id. at 7:47–49.
In step 615, proximity module may “compare the received positional
information with the area of the tolerance circle of a selected notification
point.” Id. at 7:50–52. If this comparison reveals client 230 is inside the
tolerance circle’s area, step 635 follows. Id. at 7:56–59. In step 635,
proximity module 540 ascertains whether client 230 is inside the destination
circle for the selected notification point. Id. at 8:8–10. If so, step 645
follows. Id. at 8:19–22.
In step 645, proximity module 540 may determine whether an
entrance flag is set or unset. Id. at 8:19–25, 8:33–35. If the flag is unset,
proximity module 540 may transmit a message that “indicates to the host
system 210 that the client 230 has entered the vicinity of the selected
notification point, where the vicinity may be the area encompassing and
centered on the selected notification point by the destination circle radius.”
Id. at 8:33–40. In steps 665 and 670, proximity module 540 may “set the
state of the entrance flag” and set a timer. Id. at 8:41–43. Then, proximity
module 540 may return to the idle state in step 605. Id. at 8:45–46.
Returning to step 645, if the state of the entrance flag is set, proximity
module 540 may determine in step 650 whether the timer has expired.
Id. at 8:22–25. If so, in step 655, proximity module 540 may send a message
that “indicates that the client is still within the vicinity of the selected
notification point.” Id. at 8:25–28.
Returning to step 615, if proximity module 540 determines the client
is not inside the tolerance circle, step 620 follows. 7:50–56. In step 620,
proximity module 540 determines the state of the flag. Id. at 7:53–56. If
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step 620 reveals the flag is set, proximity module 540 sends a message to
“indicate to the host system 210 that the client 230 has left the vicinity of the
selected notification point.” Id. at 7:66–8:4.
D. ILLUSTRATIVE CLAIM
Of the challenged claims, claims 1, 13, 15, 17, 19, and 20 are
independent. Each of claims 2–12, 14, 16, and 18 depends directly or
indirectly from one of independent claims 1, 13, 15, and 17. Claim 1 is
illustrative and is reproduced below with the Certificate of Correction
incorporated1 and labels added to identify each portion of the claim:2
1. [1[pre]] A method of monitoring, comprising:
[1a] receiving position information related to a notification point;
[1b] determining a position of a mobile client by said mobile
client;
[1c] comparing said position with an area encompassing said
notification point; and
[1d] transmitting a message in response to said position being
within said area encompassing said notification point; and
[1e] setting a state of an entrance flag by said client to a value
representing that said entrance flag is set in response to
said position being within said area encompassing said
notification point.
Ex. 1001, 9:15–29.

1 See Ex. 1001, p. 14 (noting “‘monitoting’ should read -- monitoring --”).
2 Petitioner used the labels 1[pre], 1[a], 1[b], 1[c], 1[d], and 1[e] to identify
different portions of claim 1. See Pet. 13–21. In our reproduction of claim
1, we have added the same labels.
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E. ASSERTED GROUNDS OF UNPATENTABILITY
Petitioner challenges the patentability of claims 1–20 of the
’365 patent on the following grounds (Pet. 1–2):
Claims
Challenged
35 U.S.C.
§§ Reference(s)
1–20 102(e), 103(a)3 Coffee
4
1–20 102(e), 103(a) McDonald
5
In support of its unpatentability contentions, Petitioner also relies on
the Declaration of Scott Andrews. Ex. 1003.
II. ANALYSIS
A. CLAIM INTERPRETATION
In an inter partes review proceeding, a claim of a patent is construed
using the same standard used in federal district court, including construing
the claim in accordance with the ordinary and customary meaning of the
claim as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent. 37 C.F.R. § 42.100(b) (2019). According to
the applicable standard, claim terms “are generally given their ordinary and
customary meaning” as understood by a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,

3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103. Because the ’365 patent
has an effective filing date prior to the effective date of the applicable AIA
amendments, we refer to the pre-AIA versions of §§ 102, 103.
4 Coffee et al., U.S. 6,611,755 B1, issued Aug. 26, 2003 (Ex. 1005,
“Coffee”).
5 McDonald, Jr. et al., U.S. 6,496,775 B2, issued Dec. 17, 2002 (Ex. 1006,
“McDonald”).
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1312–13 (Fed. Cir. 2005) (en banc). “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). Extrinsic evidence is “less significant than the
intrinsic record in determining ‘the legally operative meaning of claim
language.’” Phillips, 415 F.3d at 1317. Only those terms that are in
controversy need be construed, and only to the extent necessary to resolve
the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v.
America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
Neither party proposes an express construction for any claim
language. See Pet. 2–3; Prelim. Resp. 10–11. “Petitioner does not believe
the claim terms need to be construed to resolve the prior art issues presented
in this Petition, because each of the prior art references teaches, in relevant
part, the exact same combination of features recited by the claims of the
’365 Patent.” Pet. 2–3. “Patent Owner asserts that all of the terms of the
’365 patent should be given their ordinary and customary meaning.” Prelim.
Resp. 10–11. For the reasons explained below, for purposes of determining
whether to institute inter partes review, we need not construe expressly any
claim language.
B. ALLEGED UNPATENTABILITY OVER COFFEE
1. Overview of Coffee
Coffee “relates . . . particularly to a system for tracking the real-time
location and status of vehicles of a fleet, and for communicating between the
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vehicles and a dispatcher or expediter in the fleet offices.” Ex. 1005, 1:6–
10. Coffee identifies “ready mix concrete, bulk powder transport, bulk
aggregate transport, and ambulance operation” as exemplary applications for
its system. Id. at 74:40–44. Coffee explains that vehicle fleet owners
require knowledge of the location and activities of each vehicle in their
fleets, so that they may decide the most efficient way to use the vehicles.
Id. at 1:11–14.
Coffee discusses an embodiment of its system in connection with
Figure 1. Id. at 8:43–46. Figure 1 is reproduced below.

Figure 1 is a simplified block diagram of a “PROTRAK system.”
Id. at 7:10–12.
The system includes Network Distribution Center (NDC 10);
Hubs “11-1, 11-2, . . . 11-i”; FM Radio Station 12; customer command
station (CCS) 14, CCS 15, CCS 16; and vehicles “17-1, 17-2, . . . 17-n.”
Id. at 8:49–63. NDC 10 serves as the “brain” of the system. Id. at 8:49–50.
NDC 10 may receive information from CCS 14, CCS, 15, or CCS 16 and
forward that information to one or more of vehicles “17-1, 17-2, . . . 17-i.”
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Id. at 8:59–9:10. A vehicle may then transmit information, which passes to
“at least one of the Network Hubs 11-1, . . . , 11-i” and then to NDC 10.
Id. at 9:16–21. “NDC 10 parses all received data and provides the vehicle
location and status information for each specific fleet subscriber to its
respective CCS.” Id. at 9:21–24.
Coffee discusses an exemplary vehicle in connection with Figure 23.
Id. at 45:25–37. Figure 23 is reproduced below.

Figure 23 shows vehicle 195 with tracker 135, mobile data terminal
(MDT) 190, FM receive antenna 191, UHF/FM antenna 192, and GPS
antenna 193. Id. at 45:29–34. Tracker 135’s primary functions include
radio communication and navigation. Id. at 45:25–26. Coffee explains that
“[v]ehicle locations are tracked with an accuracy to about 5 meters through
the use of DGPS information.” Id. at 9:28–30. Tracker 135 serves
secondary functions of “supporting the user interface of [MDT 190], discrete
and analog data collection, and power control of itself and peripherals.”
Id. at 45:27–29.
Vehicle 195 “is further equipped for accommodating various sensors
for event reporting.” Id. at 45:34–36. Drum rotation sensor 280 senses
direction and speed of drum 287. Id. at 75:50–51. Water flow sensor 281
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senses water being used for washing the truck. Id. at 75:40–41. Vehicle 195
may also include a door switch (not shown) that signals when the driver door
opens. Id. at 75:41–44.
In connection with Figure 34, Coffee discusses identifying zones that
fleet vehicles may enter or exit during their use. Id. at 73:32–49. Figure 34
is reproduced below.

Figure 34 shows “an exemplary rectangular zone on a stored map used to
determine and display the tracker’s location (in particular, that of the vehicle
in which the tracker is mounted).” Id. at 8:24–27.
Coffee discloses that its system enables a vehicle dispatcher or owner
“to define rectangular zones on a stored map of the metropolitan area of
interest.” Id. at 73:39–41. As shown in Figure 34, zone 300 is an example
of such a zone. Id. at 73:41–42. Coffee elaborates that
[t]he corners defining the zones (e.g., 301, 302, 303, 304 for zone
300) are sent to the vehicles so that the tracker can determine,
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based on its navigation solution, whether it is inside or outside
any particular zone. These zones are typically set up to identify
home or plant sites where vehicles are usually based or pick up
cargo, or job sites where vehicles are usually dispatched to
deliver cargo or perform a service.
Id. at 73:42–49.
Coffee discusses “[a] number of specific applications for event driven
reporting of vehicle status,” including the ready mix concrete industry.
Id. at 74:39–52. Coffee explains:
The transit mixer truck has a well defined sequence of
events through which it runs in the process of delivering
concrete, generally comprising the steps of
1) Load
2) Leave Plant
3) Arrive Job
4) Begin Pour
5) End Pour
6) Wash
7) Leave Job
8) Arrive plant
Id. at 74:58–75:2.
Coffee discloses that “the ready mix concrete delivery phases can be
automatically and reliably determined.” Id. at 75:32–34. For this purpose,
Coffee discloses using drum rotation sensor 280, water flow sensor 281, and
a door switch. Id. at 75:34–44. Additionally, Coffee explains that
Information regarding location and speed of the vehicle is
required to determine when the truck is at a plant or a job site (or
en route to the site). The state logic ties all of this information
together to allow the tracker to report each phase of the delivery
process back to the subscriber's site.
Id. at 75:44–49.
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Coffee discusses details of the process in connection with Figure 37.
Id. at 77:49–51. Figure 37 is reproduced below.

Figure 37 shows “[a] state transition diagram which defines the logic used
by the tracker to combine sensor and navigation data to automatically derive
mixer status.” Id.
As shown in Figure 37, the process begins at the plant (311) when the
vehicle ignition is turned on (310). Id. at 77:58–59. At plant (311), when
the tracker detects certain information indicating that the truck is being
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loaded with concrete, “the tracker transmits the loading status (313).”
Id. at 77:61–67.
Typically, after loading, the truck goes to a wash rack. Id. at 78:1–2.
According to Coffee “[a] state that is detectable but not usually required by a
ready mix company is identifying if a truck is at the wash rack (314).”
Id. at 78:3–5.
After the wash rack, the truck leaves the plant. Id. at 78:8. This is
identified by “location outside the predetermined rectangular zone (e.g., see
FIG. 34) that defines the plant and a speed above 15 miles per hour. When
this is detected (315), the tracker transmits the leave plant status (316).”
Id. at 78:8–11.
Optimally, the dispatcher transmits to the truck a message indicating
to the tracker “the rectangular zone defining the boundaries of the job site.”
Id. at 78:16–18. If the tracker has this information, “[j]ob arrival is
determined by the truck entering the defined job zone and then having a
speed below five miles per hour for at least one minute, or the driver’s door
opening, whichever occurs first (317).” Id. at 78:26–29. “If the job zone is
not defined,” certain other information allows the determination of job zone
arrival. Id. at 78:29–33. “When these conditions are detected, the tracker
transmits the arrive job status (319).” Id. at 33–34. Subsequently, as the
truck progresses through certain other job-site operations, the tracker sends
certain other transmissions. Id. 78:35–79:4. “A leave job event is
transmitted when the vehicle leaves the defined job site.” Id. at 79:5–6.
“Finally, arrive plant (311) is detected when the truck enters a rectangle that
defines a plant location and the speed is less than 15 miles per hour (337).”
Id. at 79:24–27.
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Coffee discloses its system uses packets. E.g., id. at 33:39–45, 98:1–
26. Coffee discloses one such packet in Table 48. Id. at 98:1–26. Table 48
is reproduced below.

Table 48 shows:
A “Site Status” packet (Table 48) is used by a tracker to indicate
job site arrival/departure. This packet indicates the tracker ID,
message sequence ID (originally associated with the site dispatch
message), arrival/departure status, time of arrival/departure, the
source of arrival/departure status, and user data.
Id. at 33:39–45.
2. Discussion
Petitioner asserts that “[c]laims 1-20 are anticipated, or rendered
obvious, by Coffee.” Pet. 13. Subsequently, Petitioner addresses each
limitation of the challenged claims by asserting that “Coffee discloses, or
renders obvious” the limitation. Id. at 13–50. Patent Owner counters that
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Petitioner has not shown sufficiently that Coffee discloses or renders
obvious certain claim limitations. Prelim. Resp. 15–32.
In the sections that follow, we discuss certain specific disputes
regarding Petitioner’s claim challenges based on Coffee. As explained
below, Petitioner does not demonstrate a reasonable likelihood of
establishing unpatentability of claims 1–12, 15–18, and 20 based on Coffee.
a) Independent Claim 1
Petitioner argues that Coffee discloses or renders obvious all of the
limitations of independent claim 1. Pet. 13–21. Arguing that Petitioner
relies on certain portions of Coffee to address both limitation 1[d] and
limitation 1[e], Patent Owner asserts that Petitioner does not show Coffee
discloses or renders obvious limitation 1[e]. Prelim. Resp. 15–22.
Limitation 1[d] recites “transmitting a message in response to said position
being within said area encompassing said notification point.”
Ex. 1001, 9:23–24. Limitation 1[e] recites “setting a state of an entrance
flag by said client to a value representing that said entrance flag is set in
response to said position being within said area encompassing said
notification point.” Id. at 9:26–29.
Addressing limitation 1[d], Petitioner relies on Coffee’s disclosure
that “the tracker transmits the arrive job status (319)” when certain
conditions are detected (Ex. 1005, 78:26–34). Pet. 18–20. Petitioner
explains that “[w]hen the tracker detects arrival at the job site, it transmits an
‘Arrive Job’ status message (319) to the dispatch.” Id. at 19 (citing Ex. 1003
¶ 71; Ex. 1005, 78:26–34, Fig. 37). Petitioner contends that Coffee’s
“Table 48 shows an exemplary status message transmitted by the tracker
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indicating arrival to or departure from the job site.” Pet. 19 (citing Ex. 1003
¶ 72; Ex. 1005, 33:39–45).
Addressing limitation 1[e], Petitioner relies on the same disclosures of
Coffee. Pet. 20–21. Citing Coffee’s disclosure that “the tracker transmits
the arrive job status (319)” (Ex. 1005, 78:34), Petitioner asserts that “the
tracker sets the vehicle state to ‘Arrive Job’ (319).” Pet. 20. Petitioner
argues that “[t]he state logic in conjunction with location and speed of the
vehicle allows ‘the tracker to report each phase of the delivery process back
to the subscriber’s site.’” Id. Petitioner also argues Coffee’s tracker sends
the dispatch a status message “as shown in Table 48” upon job site arrival or
departure. Id. at 20–21. Petitioner asserts that “[t]he message indicates the
state of the vehicle, e.g., the status bit ‘0’ for arrival at the job site and ‘1’ for
departure from the job site.” Id. at 21. Petitioner concludes that “a [person
of ordinary skill in the art] would have understood that, when the vehicle
arrives in the job zone (‘said area’), the tracker sets the vehicle status bit to
‘0’, i.e., sets ‘a state of an entrance flag.’” Id.
In support of its arguments regarding limitations 1[d] and 1[e],
Petitioner cites paragraphs 67–77 of Mr. Andrews’ Declaration. Pet. 18–21.
These paragraphs of Mr. Andrews’ testimony are nearly identical to the
arguments the Petition presents regarding limitations 1[d] and 1[e].
Compare Pet. 18–21 with Ex. 1003 ¶¶ 67–77.
Disputing Petitioner’s contentions regarding limitation 1[e], Patent
Owner argues that “nowhere in Coffee does it disclose that ‘the tracker sets
the vehicle state to ‘Arrive Job.’’” Id. at 18–19 (citing Pet. 19). Rather,
Patent Owner asserts, “[a]s Petitioner sets forth, Coffee describes a tracker
that ‘transmits an ‘Arrive Job’ status message (319) to the dispatch’ upon
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arrival to a job site.” Id. at 18 (citing Pet. 19). Patent Owner argues that we
should not accord weight to Mr. Andrews’ “conclusory opinions.” Id. at 19–
20. Patent Owner contends that the portions of Coffee cited by Mr. Andrews
“simply explain that a message is ‘transmitted’ or ‘reported’ when a vehicle
arrives at a job site.” Id. at 19. Patent Owner argues that “Mr. Andrews
does not explain why the statements disclose ‘setting a state of an entrance
flag.’” Id. at 20.
Patent Owner also contends that “Petitioner is attempting to equate the
transmittal of a job arrival message by Coffee’s tracker to two separate claim
limitations in the ’365 patent.” Id. at 20. Patent Owner argues that
limitation 1[e]’s recitation of “setting a state of an entrance flag” is a
separate and distinct step from limitation 1[d]’s recitation of “transmitting a
message.” Id. at 15–18, 20–21.
We determine that Petitioner does not show sufficiently that Coffee
discloses or renders obvious limitation 1[e]. Petitioner and Mr. Andrews
offer conclusory characterizations of Coffee’s disclosure, changing the
apparent meaning without providing persuasive supporting explanation or
evidence. For example, Petitioner and Mr. Andrews do not provide
persuasive basis for characterizing Coffee’s disclosure that “the tracker
transmits the arrive job status (319)” (Ex. 1005, 78:34) as showing that “the
tracker sets the vehicle state to ‘Arrive Job’” (Pet. 20; Ex. 1003 ¶ 73). The
cited portion of Coffee discloses only one action that the tracker performs;
specifically, Coffee discloses the “the tracker transmits.” Ex. 1005, 78:34
(emphasis added). Petitioner and Mr. Andrews describe this portion of
Coffee as disclosing the tracker transmitting a message. Pet. 19; Ex. 1003 ¶
71. Later, Petitioner and Mr. Andrews characterize this as a disclosure that
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the tracker “sets the vehicle state,” without persuasively explaining how the
action of transmitting a message equates to setting a vehicle state. Pet. 20;
Ex. 1003 ¶ 73.
Petitioner’s and Mr. Andrews’ discussion of Coffee’s Table 48 has
substantially the same shortcoming. Petitioner argues, and Mr. Andrews
testifies, that “the tracker transmits a status message to the dispatch as
shown in Table 48.” Pet. 20–21 (emphasis added); Ex. 1003 ¶ 75.
Petitioner then argues that
The message indicates the state of the vehicle, e.g., the status bit
“0” for arrival at the job site and “1” for departure from the job
site. PS-1003, 76; PS-1005, 33:39-45. Thus,[] a POSITA would
have understood that, when the vehicle arrives in the job zone
(“said area”), the tracker sets the vehicle status bit to “0”, i.e.,
sets “a state of an entrance flag.” PS-1003, 77; PS-1005,
Table 48.
Pet. 21. Mr. Andrews’ testimony includes a substantially identical opinion.
Ex. 1003 ¶¶ 76–77. Thus, Petitioner and Mr. Andrews again equate the
tracker’s action of “transmit[ting]” a message to an action of “set[ting]” a
state. Here again, neither Petitioner nor Mr. Andrews provides persuasive
support for characterizing the disclosure of “transmit[ting]” a message to
“set[ting]” a state. Petitioner and Mr. Andrews discuss the nature of the
information that the tracker “transmits,” i.e., that the information “indicates
the state of the vehicle.” Pet. 21; Ex. 1003 ¶ 76. That discussion does not
provide a persuasive basis for characterizing the tracker’s action of
“transmit[ting]” as an action of “set[ting].”
Petitioner and Mr. Andrews add to the confusion with their statement
that “[t]he state logic in conjunction with location and speed of the vehicle
allows ‘the tracker to report each phase of the delivery process back to the
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subscriber’s site.’” Pet. 20; Ex. 1003 ¶ 74. Petitioner and Mr. Coffee omit
any explanation of how this disclosure of the tracker “report[ing]” phases
relates to setting a state of an entrance flag. See Pet. 20; Ex. 1003 ¶ 74; see
also Prelim. Resp. 19–20 (“Mr. Andrews does not explain why the
statements disclose ‘setting a state of an entrance flag . . . .”).
After the foregoing unsupported characterizations of Coffee’s
disclosure, Petitioner and Mr. Andrews ultimately address the language of
limitation 1[e] with a conclusory assertion that “a [person of ordinary skill in
the art] would have understood that, when the vehicle arrives in the job zone
. . . , the tracker sets the vehicle status bit ‘0’, i.e., sets ‘a state of an entrance
flag.’” Pet. 21; Ex. 1003 ¶ 77. This assertion assumes that “bit ‘0’”
constitutes a “flag,” as recited in limitation 1[e]. Neither the Petition nor
Mr. Andrews provides persuasive support for this assumption.
Consequently, Petitioner does not provide sufficiently clear,
persuasive explanation to support its assertion that a person of ordinary skill
in the art would understand Coffee as disclosing limitation 1[e]. Nor does
Petitioner provide sufficiently clear, persuasive explanation to support its
alternate assertion that Coffee “renders obvious” limitation 1[e]. Indeed,
after vaguely asserting that Coffee “discloses, or renders obvious” limitation
1[e] (Pet. 20), Petitioner’s discussion of limitation 1[e] does not allege that
any modification of Coffee’s disclosure would have been obvious
(see id. at 20–21).6

6 Also, as Patent Owner notes, Petitioner does not contend, and Mr. Coffee
does not testify, that limitation 1[e] is disclosed inherently by Coffee. See
Prelim. Resp. 2–3; Pet. 20–21.
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Because the Petition does not support its allegation that Coffee
discloses or renders obvious limitation 1[e] with sufficiently clear,
persuasive explanation, Petitioner does not demonstrate a reasonable
likelihood of establishing unpatentability of independent claim 1 over
Coffee. See, e.g., 37 C.F.R. §§ 42.22(a)(2), 42.104(b).
b) Claims 2–12
Each of claims 2–12 depends, directly or indirectly, from independent
claim 1. Ex. 1001, 9:30–11:55. Petitioner’s arguments addressing claims 2–
12 do not cure the deficiencies in Petitioner’s challenge of independent
claim 1 based on Coffee, as discussed above in Section II.B.2.a. See
Pet. 21–43. Accordingly, Petitioner does not demonstrate a reasonable
likelihood of prevailing on its challenge of any of claims 2–12 based on
Coffee.
c) Independent Claim 15
One of the issues regarding Petitioner’s challenge of claim 15 relates
to the “stationary circle” recited in the preamble and recited repeatedly in the
body of the claim. Ex. 1001, 11:12–24. More specifically, there is an issue
relating to claim 15’s recitation of “a stationary circle encompassing a
waypoint” (id. at 11:12–13 (emphasis added)), which appears in the claim’s
preamble. Ex. 1001, 11:11–13.
Addressing the preamble of claim 15, Petitioner states “[t]o the extent
the preamble is limiting, Coffee discloses, or renders obvious, this limitation
for the same reasons as discussed for [claim 1’s preamble] in
Section VI.A.1.(a).” Pet. 46. The portion of the Petition addressing
claim 1’s preamble states only that
[t]o the extent the preamble is limiting, Coffee discloses, or
renders obvious, this limitation. Coffee describes “a vehicle fleet
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management information system” that “identifies location and
direction of movement of each vehicle in a fleet in real-time, and
automatically reports such information, as well as status of
predetermined events in which the vehicle is engaged, directly to
the fleet manager.” PS-1003, 52-53; PS-1005, Abstract; see also
1:6-11.
Pet. 13–14. In addition to these arguments, when addressing claim 15’s
preamble, the Petition contends that “[t]o the extent Coffee is deemed not to
explicitly disclose that job zones can be ‘circular,’ it would have been
obvious to a [person of ordinary skill in the art] to implement a circular
instead of a rectangular job zone.” Id. at 46. The Petition then elaborates on
its position that it would have been obvious to modify Coffee to use a
circular job zone. Id.
Patent Owner argues that Petitioner does not address the preamble of
claim 15 adequately. Prelim. Resp. 31–32. Patent Owner argues that the
preamble is limiting, noting that the preamble provides antecedent basis for
the claim body’s recitations of “said stationary circle.” Id. at 31.
Accordingly, Patent Owner argues, “said stationary circle” within the
preamble and the body of claim 15 is “limited to . . . a circle encompassing
a waypoint.” Id. at 32. Patent Owner argues that Petitioner does not even
attempt to address claim 15’s recitation of waypoint. Id.
We agree with Patent Owner that Petitioner does not address
adequately claim 15’s recitation of “a stationary circle encompassing a
waypoint.” Petitioner neither (1) argues that the recitation of “a waypoint”
in claim 15’s preamble is not limiting, nor (2) provides any argument that a
“waypoint” is disclosed by or would have been obvious over Coffee. See,
generally, Pet. Accordingly, Petitioner has not demonstrated a reasonable
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likelihood of prevailing on its assertion that independent claim 15 is
unpatentable over Coffee. See, e.g., 37 C.F.R. §§ 42.22(a)(2), 42.104(b).
d) Claim 16
Claim 16 depends from independent claim 15. Ex. 1001, 11:25.
Petitioner’s arguments addressing claim 16 do not cure the deficiencies in
Petitioner’s challenge of independent claim 15 based on Coffee, as discussed
above in Section II.B.2.c. See Pet. 47–48. Accordingly, Petitioner does not
demonstrate a reasonable likelihood of prevailing on its challenge of
claim 16 based on Coffee.
e) Independent Claim 17
Claim 17’s preamble recites “[a] method of locally monitoring the
mobile position of a mobile client relative to a stationary area encompassing
a waypoint.” Ex. 1001, 11:33–35. As with the challenge of claim 15 based
on Coffee, Petitioner neither (1) argues that the recitation of “a waypoint” in
claim 17’s preamble is not limiting, nor (2) provides any argument that a
“waypoint” is disclosed by or would have been obvious over Coffee. See
Pet. 48. Accordingly, Petitioner has not demonstrated a reasonable
likelihood of prevailing on its assertion that independent claim 17 is
unpatentable over Coffee. See, e.g., 37 C.F.R. §§ 42.22(a)(2), 42.104(b).
f) Claim 18
Claim 18 depends from independent claim 17. Ex. 1001, 12:5.
Petitioner’s arguments addressing claim 18 do not cure the deficiencies in
Petitioner’s challenge of independent claim 17 based on Coffee, as discussed
above in Section II.B.2.e. See Pet. 48–49. Accordingly, Petitioner does not
demonstrate a reasonable likelihood of prevailing on its challenge of
claim 17 based on Coffee.
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g) Independent Claim 20
When addressing independent claim 20, Petitioner relies entirely on
its arguments that independent claim 1 is unpatentable over Coffee. See
Pet. 49–50. For the reasons discussed above in Section II.B.2.a, Petitioner
does not demonstrate a reasonable likelihood of prevailing on its arguments
that independent claim 1 is unpatentable over Coffee. For the same reasons,
Petitioner does not demonstrate a reasonable likelihood of prevailing on its
assertion that independent claim 20 is unpatentable over Coffee.
C. ALLEGED UNPATENTABILITY OVER MCDONALD
1. Overview of McDonald
McDonald relates to automatically tracking vehicles during delivery
processes. Ex. 1006, 1:8–9. McDonald shows a delivery system according
to its disclosure in Figure 1. Id. at 3:36–38. Figure 1 is reproduced below.

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Figure 1 “illustrates a delivery fleet of ready-mix concrete trucks T1, T2, T3
in various states of a delivery cycle between different batching terminals B1,
B2 and different delivery sites D1, D2.” Id. at 4:7–10.
The system shown in Figure 1 includes dispatch center 6, central data
center 28, and wireless carrier service provider 26. Id. at 4:16–21, 5:55–59.
McDonald explains that
[m]ovement of the trucks Tl, T2, T3 between the different
batching terminals Bl, B2 and different delivery sites Dl, D2 is
coordinated by a fleet dispatcher at a central dispatch center 6,
who must monitor the state of the trucks Tl, T2, T3 throughout
the delivery cycle to efficiently coordinate the delivery fleet.
The delivery cycle is defined based on specific delivery
states of delivery vehicles during the process of loading, transit
and delivery of materials. In the case of a ready-mix concrete
application, the delivery cycle generally includes the delivery
states of: “At Terminal”; “Loading”; “Leaving Terminal”; “At
Job Site”; “Begin Pour”; “End Pour”; and “Leaving Job Site”.
The progression of states is strictly defined as schematically
illustrated in FIG. 2. For example, a valid “Loading” state cannot
take place unless a valid “At Terminal” state has occurred. As
will be described in greater detail, accurate knowledge of present
and past states enables automatic inference of a subsequent state.
Id. at 4:16–33. Figure 2 is reproduced below.
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Figure 2 “illustrates a delivery cycle for a ready-mix concrete application of
the type illustrated in [Figure] 1.” Id. at 3:39–40.
As shown in Figure 1, each truck T1, T2, T3 includes mixing barrel 8
and mobile data unit 10. Id. at 4:34–35, 58–59. McDonald discusses mobile
data unit 10 in connection with Figure 3. 4:58–65. Figure 3 is reproduced
below.
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Figure 3 “is a schematic block diagram illustrating a mobile data unit
utilized in the system illustrated in [Figure] 1.” Id. at 3:41–42. “[T]he
mobile data unit 10 includes a wireless transmitter/receiver 12 and global
position satellite (GPS) receiver 14, an intelligent controller 16, a display
unit 18, a data entry device 20 (for example a keypad), and at least on
vehicle condition sensor 22.” Id. at 4:59–63. Preferably, vehicle condition
sensor 22 monitors whether mixing barrel 8 is functioning in a discharge
condition or a charge condition. Id. at 4:65–5:1.
During operation, the location of each truck T1, T2, T3 is sent to
central dispatch center 6 for presentation on overlay maps on display
monitor 32 (Figure 1). Id. at 6:49–51. McDonald further explains vehicle
monitoring in connection with Figure 7. Figure 7 is reproduced below.
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Figure 7 “illustrates icons used to identify the location and delivery state of
the vehicles employed in the system of [Figure] 1.” Id. at 3:51–53.
Specifically, Figure 7 shows a map displaying icons for trucks T1, T2.
Id. at 7:46–49.
The dispatcher can see available vehicles and match them “in realtime
with job sites at identified locations known as ‘geographic fences’ or ‘hot
zones’ via a point-and-click interface.” Id. at 6:61–64. The dispatcher can
send a message to a truck instructing to load concrete at a particular batching
site and deliver to a particular delivery site. Id. at 7:59–63. Preferably, the
message includes the position coordinates of the batching and delivery sites.
Id. at 7:63–65.
After truck T1 has received a job assignment from central dispatch
center, “mobile data unit 10 monitors the location of the truck T1 with
respect to the coordinates corresponding to the batch terminal B1 and
delivery site D1 and their respective hot zones.” Id. at 8:10–14. When
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truck T1 enters and exits hot zones, mobile data unit sends status messages
to central data center 28. Id. at 8:15–40, 9:4–19. For example, “the mobile
data unit 10 sends an ‘At Job Site’ status message when the truck T1 crosses
the boundary of the hot zone defined around the delivery site D1.”
Id. at 9:4–8.
McDonald discusses different possible approaches for communication
of information between each truck’s mobile data unit 10 and central dispatch
center:
It should be noted that, after the initial assignment of a job,
no communication is required from the central dispatch center 6
to the truck Tl. Instead, the mobile data unit 10 is able to
constantly monitor the progress of truck Tl through the use of the
intelligent controller 16 and inform the central dispatch center 6
when certain changes in delivery state have occurred. The feature
of onboard intelligence to monitor delivery states and changes in
delivery states provides a distinct advantage over systems that
are required to poll the vehicle to determine its location and
status, namely, communication overhead is limited to providing
messages only when an actual change in delivery state occurs.
The reduction of communication overhead greatly reduces
communication expenses associated with cellular wireless
systems and also avoids bandwidth problems associated with
private direct radio link communication systems employed in
various types of delivery applications.
The dispatcher, of course, may manually poll the truck Tl
at any time to find out its specific location or delivery state.
Alternatively, automatic polling can be conducted by the
dispatch center 6 or a timer can be provided within the mobile
data unit 10 to periodically update the status information
automatically to the dispatch center 6 if desired. The frequency
of polling is a tradeoff between the above-described advantages
of reducing communication overhead and available
communication resources.
Id. at 8:45–9:3.
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2. Discussion
Petitioner asserts that “[c]laims 1-20 are anticipated, or rendered
obvious, by McDonald.” Pet. 50. Subsequently, Petitioner addresses each
limitation of the challenged claims by asserting that “McDonald discloses, or
renders obvious” the limitation. Id. at 50–77. Patent Owner counters that
Petitioner has not shown sufficiently that McDonald discloses or renders
obvious certain claim limitations. Prelim. Resp. 34–44.
In the sections that follow, we discuss certain specific disputes
regarding Petitioner’s claim challenges based on McDonald. As explained
below, Petitioner does not demonstrate a reasonable likelihood of
establishing unpatentability of claims 1–20 over McDonald.
a) Independent Claim 1
Petitioner argues that McDonald discloses or renders obvious all of
the limitations of independent claim 1. Pet. 50–56. Patent Owner disputes
Petitioner’s assertion that McDonald discloses or renders obvious
limitation 1[e].
Addressing limitation 1[e], Petitioner notes that “McDonald describes
that ‘[t]he delivery cycle is defined based on specific delivery states of
delivery vehicles during the process of loading, transit and delivery of
materials.’” Pet. 54–55 (citing Ex. 1003 ¶ 235; Ex. 1006, 4:22–33).
According to Petitioner, “[w]hen the vehicle enters a hot zone, the mobile
data unit sets the delivery state of the vehicle (i.e., ‘setting a state of an
entrance flag’) to ‘At Job Site.’” Id. at 55 (citing Ex. 1003 ¶ 237; Ex. 1006,
9:4–8). Petitioner elaborates:
A [person of ordinary skill in the art] would have
understood that the mobile data unit must set the state of a vehicle
(i.e., the state of a flag) since vehicle states progress as defined
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in Figure 2 and “accurate knowledge of present and past states
enables automatic inference of a subsequent state.” PS-1003,
238; PS-1005, 4:28-33, 9:55-64. In other words, the vehicle state
cannot progress to a next state unless the previous state has been
set. PS-1003, 239.
A [person of ordinary skill in the art] would have
understood that in order to assure that the next state follows the
progression of states described in Figure 2 above, the current
state must be known, that is it must be stored, and thus the state
is represented by setting a flag that is stored to indicate the state.
Id.
Pet. 55–56.
In support of its arguments regarding limitation 1[e], Petitioner cites
paragraphs 235–239 of Mr. Andrews’ Declaration. Pet. 54–56. These
paragraphs of Mr. Andrews’ testimony are nearly identical to the arguments
the Petition presents regarding limitation 1[e]. Compare Pet. 54–56 with
Ex. 1003 ¶¶ 235–239.
Patent Owner disputes Petitioner’s argument that McDonald discloses
or renders obvious limitation 1[e]. Prelim. Resp. 34–37. Patent Owner first
argues that “[i]ndependent claim[] 1 . . . require[s] ‘setting a state of an
entrance flag’ by a ‘mobile client.’” Id. at 34.
Patent Owner then explains that Petitioner cites a portion of
McDonald that discusses transmitting a message as allegedly disclosing
“setting a state of an entrance flag.” Id. at 35 (citing Pet. 55; Ex. 1003
¶ 237; Ex. 1006, 9:4–8). Patent Owner argues this does not “disclose setting
a delivery state for a vehicle.” Id.
Patent Owner also argues that Petitioner and Mr. Andrews fail to cite
any evidence that McDonald discloses setting the delivery state at the mobile
client. Id. at 37. Patent Owner asserts that even if the delivery state is set in
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McDonald’s system, it “is set by the dispatch center in McDonald, not a
mobile client.” Id. at 36. Citing a portion of McDonald discussing
displaying vehicle location and status at dispatch center 6, Patent Owner
argues “[e]ach vehicle is assigned a state indicator at the dispatch center
(e.g., ‘Begin Pour’ or ‘Finish Pour’).” Id. at 36 (citing Ex. 1006, 7:46–54).
Patent Owner also argues that neither Petitioner nor Mr. Andrews
presents “any meaningful” assertion that it would have been obvious to
modify McDonald’s disclosure to meet limitation 1[e]. Id. at 37. Patent
Owner explains that “[i]nstead, Petitioner simply contends that the
transmission of the message itself reveals this element—but that is not the
case.” Id.
We determine that Petitioner has not supported sufficiently its
assertion that McDonald discloses or renders obvious limitation 1[e]. We
first note, consistent with Patent Owner’s argument, limitation 1[e] requires
“setting a state of an entrance flag by said client.” Ex. 1001, 9:26 (emphasis
added). “[S]aid client” refers to “a mobile client.” See id. at 9:19–26. Thus,
we agree with Patent Owner that limitation 1[e] requires the mobile client to
“set[] the state of an entrance flag.” Petitioner does not show sufficiently
that this requirement is disclosed or would have been obvious over
McDonald.
Petitioner and Mr. Andrews offer conclusory characterizations of
McDonald’s disclosure, changing the apparent meaning without providing
persuasive supporting explanation or evidence. They do so, for example,
with McDonald’s disclosure that “[r]eturning to the description of the
delivery cycle in the illustrated embodiment, the mobile data unit 10 sends
an ‘At Job Site’ status message when the truck T1 crosses the boundary of
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the hot zone defined around the delivery site D1.” Ex. 1006, 9:4–8. This
passage discloses only one action performed by mobile data unit 10;
specifically, it discloses mobile data unit 10 “sends . . . [a] message.”
Petitioner and Mr. Andrews characterize this as a disclosure that the mobile
data unit “sets the delivery state.” Pet. 55; Ex. 1003 ¶ 237. Neither
Petitioner nor Mr. Andrews provides a persuasive explanation for how the
disclosed “send[ing]” constitutes “set[ting].” See Pet. 55; Ex. 1003 ¶ 237.
Petitioner and Mr. Andrews also cite various other portions of
McDonald as disclosing that McDonald keeps track of the vehicle’s status
within a progression of states in a defined delivery cycle. Pet. 54–56;
Ex. 1003 ¶¶ 235–239. Petitioner and Mr. Andrews conclude from these
portions that
[a person of ordinary skill in the art] would have understood that
in order to assure that the next state follows the progression of
states described in Figure 2 above, the current state must be
known, that it must be stored, and thus the state is represented by
setting a flag that is stored to indicate the state.
Pet. 55–56; Ex. 1003 ¶ 239. Even if accurate, this statement establishes only
that McDonald’s system, generally, sets and stores a flag to represent the
state, which does not meet limitation 1[e]’s requirement that the state of an
entrance flag is set by a mobile client.
And neither Petitioner nor Mr. Andrews provides persuasive evidence
that a person of ordinary skill in the art would have understood McDonald
discloses the state of an entrance flag is stored by a mobile client, e.g.,
mobile data unit 10. For example, in support of his opinion that “[a person
of ordinary skill in the art] would have understood that the mobile data unit
must set the state of a vehicle (i.e., the state of a flag) since vehicle states
progress as defined in Figure 2 above and ‘accurate knowledge of present
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and past states enables automatic inference of a subsequent state,’” Mr.
Andrews cites McDonald’s disclosure at column 4, lines 28–33 and
column 9, lines 55–64. See Ex. 1003 ¶ 238. This disclosure says nothing
about mobile data unit 10, much less say anything about mobile data unit 10
setting or storing a vehicle state. See Ex. 1006, 4:28–33, 9:55–64. Instead,
it explains that “recording of present and past delivery states in the delivery
state database 30 enables automatic inference of a next state depending on
sensor output.” Ex. 1006, 9:59–61 (emphasis added). Mobile data unit 10
does not include delivery state database 30. Ex. 1006, 4:59–65; Fig. 3. Mr.
Andrews does not explain persuasively how McDonald’s disclosure of
recording states in delivery state database 30 supports his opinion that the
state of a flag is set by mobile data unit 10.
For at least the foregoing reasons, Petitioner does not support
sufficiently its assertion that a person of ordinary skill in the art would have
understood McDonald as disclosing limitation 1[e]. Nor does Petitioner
provide sufficiently clear, persuasive explanation to support its alternate
assertion that McDonald “renders obvious” limitation 1[e]. Indeed, after
vaguely asserting that McDonald “discloses, or renders obvious”
limitation 1[e] (Pet. 54), Petitioner’s discussion of limitation 1[e] does not
allege that any modification of Coffee’s disclosure would have been obvious
(see id. at 54–56).7
Because the Petition does not support its allegation that McDonald
discloses or renders obvious limitation 1[e] with sufficiently clear,

7 Also, as Patent Owner notes, Petitioner does not contend, and Mr. Andrews
does not testify, that limitation 1[e] is disclosed inherently by McDonald.
See Prelim. Resp. 2–3; Pet. 54–56.
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persuasive explanation, Petitioner does not demonstrate a reasonable
likelihood of establishing unpatentability of independent claim 1 over
McDonald. See, e.g., 37 C.F.R. §§ 42.22(a)(2), 42.104(b).
b) Claims 2–12
Petitioner’s arguments addressing dependent claims 2–12 do not cure
the deficiencies in Petitioner’s challenge of independent claim 1 based on
McDonald, as discussed above in Section II.C.2.a. See Pet. 56–72.
Accordingly, Petitioner does not demonstrate a reasonable likelihood of
prevailing on its challenge of any of claims 2–12 based on McDonald.
c) Independent Claim 13
The parties’ dispute regarding claim 13 relates to limitation 13[d].
See Pet. 72; Prelim. Resp. 37–41. Limitation 13[d] recites “responsive to
said position being within said area encompassing said notification point,
initiating a timer and transmitting a message.” Ex. 1001, 10:63–65.
Petitioner argues that McDonald discloses or renders obvious this claim
limitation. Pet. 72. Petitioner equates McDonald’s hot zone to the claimed
“area encompassing said notification point.” Id. at 53.
Patent Owner argues that Petitioner has not shown sufficiently that
McDonald discloses or renders obvious limitation 13[d]’s requirement of
“responsive to said position being within said area encompassing said
notification point, initiating a timer.” Prelim. Resp. 37–41. In particular, as
discussed in detail below, Patent Owner notes that McDonald discusses a
timer, but argues Petitioner does not show that McDonald discloses or
renders obvious using a timer responsive to the vehicle position being within
the hot zone. Id.
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Petitioner address limitation 13[d] by referring to its challenge of
dependent claim 6 based on McDonald. Pet. 72. Petitioner argues (1) a
person of ordinary skill in the art would have understood McDonald as
disclosing initiation of a timer responsive to entering the hot zone, and (2) to
the extent McDonald does not disclose such operation, it would have been
obvious. Id. at 65–66.
In support of its position that a person of ordinary skill in the art
would have understood McDonald discloses the claim limitation, Petitioner
argues that McDonald’s “mobile data unit can include a timer.” Pet. 65.
Petitioner cites McDonald’s disclosure that
[a]lternatively, automatic polling can be conducted by the
dispatch center 6 or a timer can be provided within the mobile
data unit 10 to periodically update the status information
automatically to the dispatch center 6 if desired.
Ex. 1006, 8:64–67; Pet. 65. Petitioner argues that a person of ordinary skill
in the art would have understood that periodically transmitting messages
would require starting the timer to identify when to send the next message.
Pet. 65. Petitioner adds that the mobile data unit sends a message when the
vehicle crosses a hot zone boundary. Id. at 66. Petitioner concludes that “[a
person of ordinary skill in the art] would have understood that, to transmit
periodic messages, the timer starts measuring the time elapsed since the last
message, such as the message indicating arrival in the hot zone, was
transmitted.” Id.
In support of its alternate position that the claim limitation would have
been obvious, Petitioner argues that
[t]o the extent McDonald is deemed not to explicitly disclose that
the timer is initiated “in response to said position being within
said area,” it would have been obvious to a POSITA that periodic
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updates are most important while the vehicle is located within
the hot zone (“said area”) so that the dispatch center is informed
“when certain changes in delivery state have occurred” to
“monitor the state of the trucks T1, T2, T3 throughout the
delivery cycle to efficiently coordinate the delivery fleet.”
Id.
Petitioner further supports its position regarding limitation 13[d] by
citing paragraphs 278–281 and 318 of Mr. Andrews’ Declaration. Pet. 65–
66, 72. These paragraphs of Mr. Andrews’ testimony are nearly identical to
the arguments the Petition presents regarding limitation 13[d]. Compare
Pet. 65–66, 72 with Ex. 1003 ¶¶ 278–281, 318.
Patent Owner argues Petitioner fails to demonstrate McDonald
discloses or renders obvious initiating a timer “responsive to” a vehicle
entering a hot zone. Prelim. Resp. 37–41. Patent Owner argues that
McDonald discloses a timer for periodic updates, but includes no disclosure
relating “to the use of a timer ‘responsive to’ a mobile client being within an
area.” Id. at 38. Patent Owner asserts that “[a]t best, Petitioner has
established that McDonald renders obvious initiating a timer to determine
when to periodically update the delivery status information.” Id.
According to Patent Owner, Petitioner’s obviousness theory does not
comport with McDonald’s disclosures regarding updates triggered by actual
status changes versus periodic updates. Id. at 40–41. Patent Owner explains
that McDonald touts that “communication overhead is limited to providing
messages only when an actual change in delivery state occurs,” which
allows a “reduction of communication overhead” and “avoids bandwidth
problems.” Id. at 40 (quoting Ex. 1006, 8:51–61). Patent Owner elaborates
that
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As described in McDonald, limiting the amount of messages sent
from mobile client to the back office is critical. Because of this,
when contemplating the use of a timer McDonald explicitly
cautions that “[t]he frequency of polling [location and delivery
status] is a tradeoff between the above-described advantages of
reducing communication overhead.” Id. at 8:65–9:3. Therefore,
if a timer were to be used in McDonald, it would have been used
sparingly and only in circumstances where a vehicle was not
“providing messages [upon] actual change in delivery state.” Id.
at 8:51–61.
Id. at 40–41.
We determine that Petitioner has not supported sufficiently its
assertion that McDonald discloses or renders obvious limitation 13[d]. In
particular, consistent with Patent Owner’s arguments, Petitioner has not
shown sufficiently that McDonald discloses or renders obvious
limitation 13[d]’s requirement of “responsive to said position being within
said area encompassing said notification point, initiating a timer.”
Ex. 1001, 10:63–64 (emphasis added).
First, we address Petitioner’s position that a person of ordinary skill in
the art would understand McDonald discloses this limitation. This position
rests on the conclusory statement that “[a person of ordinary skill in the art]
would have understood that, to transmit periodic messages, the timer starts
measuring the time elapsed since the last message, such as the message
indicating arrival in the hot zone, was transmitted.” Pet. 66; Ex. 1003 ¶ 280.
This statement assumes that a person of ordinary skill in the art would have
understood McDonald discloses sending periodic messages in the same
embodiment as sending messages bases on detection of actual changes of
delivery state when the vehicle enters hot zones. It also assumes that a
person of ordinary skill in the art would understand McDonald as disclosing
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that the message sent at entry of a hot zone constitutes the first periodic
message (or at least one of the periodic messages). Neither Petitioner nor
Mr. Andrews provides persuasive support for these assumptions. See
Pet. 65; Ex. 1003 ¶ 280.
Next, we address Petitioner’s position that McDonald renders obvious
limitation 13[d]. This position rests on Petitioner’s and Mr. Andrews’
statement that
it would have been obvious to a [person of ordinary skill in the
art] that periodic updates are most important while the vehicle is
located within the hot zone (“said area”) so that the dispatch
center is informed “when certain changes in delivery state have
occurred” to “monitor the state of the trucks T1, T2, T3
throughout the delivery cycle to efficiently coordinate the
delivery fleet.”
Pet. 66; Ex. 1003 ¶ 281. In support of this opinion, Mr. Andrews cites
McDonald’s disclosure that
Movement of the trucks T1, T2, T3 between the different
batching terminals B1, B2 and different delivery sites D1, D2 is
coordinated by a fleet dispatcher at a central dispatch center 6,
who must monitor the state of the trucks Tl, T2, T3 throughout
the delivery cycle to efficiently coordinate the delivery fleet.
Ex. 1006, 4:16–21. We do not find that this passage supports Petitioner’s
and Mr. Andrews’ position that a person of ordinary skill in the art would
have found periodic updates most important when the vehicle is in the hot
zone. The disclosure that the “fleet dispatcher . . . must monitor the state of
the trucks T1, T2, T3 throughout the delivery cycle to efficiently coordinate
the fleet,” including “[m]ovement . . . between . . . the different batching
terminals B1, B2 and different delivery sites D1, D2” does not suggest any
elevated importance of status information when a vehicle is within a hot
zone. Id. (emphases added).
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Additionally, Petitioner and Mr. Andrews do not explain persuasively
why periodic updates when the vehicle is in the hot zone would better alert
the dispatcher to “certain changes in delivery state” than having the system
“provid[e] messages only when an actual change in delivery state occurs.”
See Ex. 1006, 8:55–56. Indeed, as Patent Owner notes, McDonald discloses
advantages of limiting messages to reporting actual changes in delivery
state. Id. at 8:51–61; Prelim. Resp. 40–41. In view of the foregoing, we do
not find that Petitioner’s evidence and arguments provide rational
underpinning for its assertion of obviousness.
Because Petitioner does not show sufficiently that McDonald
discloses or renders obvious limitation 13[d], Petitioner does not
demonstrate a reasonable likelihood of prevailing on its challenge of
claim 13 as allegedly unpatentable over McDonald.
d) Claim 14
Petitioner’s arguments addressing dependent claim 14 do not cure the
deficiencies in Petitioner’s challenge of independent claim 13 based on
McDonald, as discussed above in Section II.C.2.c. See Pet. 73.
Accordingly, Petitioner does not demonstrate a reasonable likelihood of
prevailing on its challenge of claim 14 based on McDonald.
e) Independent Claim 15
One of the issues regarding Petitioner’s challenge of claim 15 relates
to the “stationary circle” recited in the preamble and recited repeatedly in the
body of the claim. Ex. 1001, 11:12–24. More specifically, there is an issue
relating to claim 15’s recitation of “a stationary circle encompassing a
waypoint” (id. at 11:12–13 (emphasis added)), which appears in the claim’s
preamble. Ex. 1001, 11:11–13.
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Addressing the preamble of claim 15, Petitioner states
[t]o the extent the preamble is limiting, McDonald discloses, or
renders obvious, this limitation for the same reasons as discussed
for [claim 1’s preamble] in Section VI.B.1.(a). PS-1003, 326.
McDonald further describes that the mobile data unit monitors
the location of the vehicle “with respect to the coordinates
corresponding to the batch terminal B1 and delivery site D1 and
their respective hot zones.”
Pet. 73–74. The portion of the Petition addressing claim 1’s preamble first
asserts that
[t]o the extent the preamble is limiting, McDonald discloses, or
renders obvious, this limitation. PS-1003, 227; PS-1006, 1:9-15.
Each vehicle is equipped with a mobile data unit that includes a
wireless transmitter/receiver, a global positioning satellite
receiver, a controller, a display, a data entry device, and various
sensors as shown in Fig. 3.
Id. at 50. The Petition then argues that “[t]he mobile data unit monitors the
state of the truck through the delivery process, and updates the dispatch center
when changes in the state occur.” Id. at 51.
Patent Owner argues that Petitioner does not address the preamble of
claim 15 adequately. Prelim. Resp. 42–44. Patent Owner argues that the
preamble is limiting, noting that the preamble provides antecedent basis for
the claim body’s recitations of “said stationary circle.” Id. at 43.
Accordingly, Patent Owner argues, “said stationary circle” within the
preamble and the body of claim 15 is “limited to . . . a circle encompassing
a waypoint.” Id. Patent Owner argues that Petitioner does not even attempt
to address claim 15’s recitation of waypoint. Id.
We agree with Patent Owner that Petitioner does not address
adequately claim 15’s recitation of “a stationary circle encompassing a
waypoint.” Petitioner neither (1) argues that the recitation of “a waypoint”
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in claim 15’s preamble is not limiting, nor (2) provides any argument that a
“waypoint” is disclosed by or would have been obvious over McDonald.
See, generally, Pet. Accordingly, Petitioner has not demonstrated a
reasonable likelihood of prevailing on its assertion that independent claim 15
is unpatentable over McDonald. See, e.g., 37 C.F.R. §§ 42.22(a)(2),
42.104(b).
f) Claim 16
Petitioner’s arguments addressing dependent claim 16 do not cure the
deficiencies in Petitioner’s challenge of independent claim 15 based on
McDonald, as discussed above in Section II.C.2.e. See Pet. 75.
Accordingly, Petitioner does not demonstrate a reasonable likelihood of
prevailing on its challenge of claim 16 based on McDonald.
g) Independent Claim 17
Claim 17’s preamble recites “[a] method of locally monitoring the
mobile position of a mobile client relative to a stationary area encompassing
a waypoint.” Ex. 1001, 11:33–35. As with the challenge of claim 15 based
on McDonald, Petitioner neither (1) argues that the recitation of “a
waypoint” in claim 17’s preamble is not limiting, nor (2) provides any
argument that a “waypoint” is disclosed by or would have been obvious over
McDonald. See Pet. 75–76. Accordingly, Petitioner has not demonstrated a
reasonable likelihood of prevailing on its assertion that independent claim 17
is unpatentable over McDonald. See, e.g., 37 C.F.R. §§ 42.22(a)(2),
42.104(b).
h) Claim 18
Petitioner’s arguments addressing dependent claim 18 do not cure the
deficiencies in Petitioner’s challenge of independent claim 17 based on
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McDonald, as discussed above in Section II.C.2.g. See Pet. 76.
Accordingly, Petitioner does not demonstrate a reasonable likelihood of
prevailing on its challenge of claim 18 based on McDonald.
i) Independent Claim 19
Within independent claim 19, limitation 19[d] recites “in response to
said position being within said area encompassing said notification point.”
Ex. 1001, 12:21–23. When addressing limitation 19[d], Petitioner relies on
the same arguments that Petitioner relied on to address claim
limitation 13[d]. See Pet. 72 (“McDonald discloses, or renders obvious,
limitation[] . . . 13[d] . . . for the same reasons as discussed for limitation[]
. . . 6.”); id. at 77 (“McDonald discloses, or renders obvious, limitation[]
. . . 19[d] . . . for the same reasons as discussed for limitation[] . . . 6.”). For
the reasons explained above in Section II.C.2.c, those arguments are
insufficient to demonstrate a reasonable likelihood of prevailing on the
assertion that claim 13 is unpatentable over McDonald. For the same
reasons, those arguments are insufficient to demonstrate a reasonable
likelihood of prevailing on the assertion that claim 19 is unpatentable over
McDonald.
j) Independent Claim 20
When addressing independent claim 20, Petitioner relies entirely on
its arguments that independent claim 1 is unpatentable over McDonald. See
Pet. 77. For the reasons discussed above in Section II.C.2.a, Petitioner does
not demonstrate a reasonable likelihood of prevailing on its arguments that
independent claim 1 is unpatentable over McDonald. For the same reasons,
Petitioner does not demonstrate a reasonable likelihood of prevailing on its
assertion that independent claim 20 is unpatentable over McDonald.
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III. CONCLUSION
As explained above in Sections II.B and II.C, Petitioner does not
demonstrate a reasonable likelihood of prevailing on its assertion that
claims 1–12, 15–18, and 20 are unpatentable over Coffee, nor does
Petitioner demonstrate a reasonable likelihood of prevailing on its assertion
that claims 1–20 are unpatentable over McDonald. Given this, regardless of
whether Petitioner has demonstrated a reasonable likelihood of establishing
unpatentability of one or more of claims 13, 14, and 19 over Coffee, we
determine that it would not be an efficient use of Board resources to institute
an inter partes review. See Chevron Oronite Co. v. Infineum USA L.P.,
IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); see
also Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (PTAB
Jan. 24, 2019) (informative). Accordingly, we exercise discretion under 35
U.S.C. § 314(a) to decline to institute inter partes review.
IV. ORDER
For the reasons given, it is:
ORDERED that the Petition is denied, and no trial is instituted.
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For PETITIONER:

John Phillips
Jason Wolff
Markus D. Weyde
FISH & RICHARDSON P.C.
phillips@fr.com
wolff@fr.com
weyde@fr.com

For PATENT OWNER:

Gianni Cutri
Adam R. Alper
Akshay S. Deoras
Michael W. De Vries
KIRKLAND & ELLIS LLP
gianni.cutri@kirkland.com
adam.alper@kirkland.com
akshay.deoras@kirkland.com
micheal.devries@kirkland.com