XRS CorporationDownload PDFPatent Trials and Appeals BoardJun 8, 2021IPR2021-00124 (P.T.A.B. Jun. 8, 2021) Copy Citation 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 IPR2021-00124 Patent 7,043,365 B2 2 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. IPR2021-00124 Patent 7,043,365 B2 3 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. IPR2021-00124 Patent 7,043,365 B2 4 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, IPR2021-00124 Patent 7,043,365 B2 5 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 IPR2021-00124 Patent 7,043,365 B2 6 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 IPR2021-00124 Patent 7,043,365 B2 7 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 IPR2021-00124 Patent 7,043,365 B2 8 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. IPR2021-00124 Patent 7,043,365 B2 9 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”). IPR2021-00124 Patent 7,043,365 B2 10 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 IPR2021-00124 Patent 7,043,365 B2 11 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.” IPR2021-00124 Patent 7,043,365 B2 12 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 IPR2021-00124 Patent 7,043,365 B2 13 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, IPR2021-00124 Patent 7,043,365 B2 14 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. IPR2021-00124 Patent 7,043,365 B2 15 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 IPR2021-00124 Patent 7,043,365 B2 16 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. IPR2021-00124 Patent 7,043,365 B2 17 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 IPR2021-00124 Patent 7,043,365 B2 18 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 IPR2021-00124 Patent 7,043,365 B2 19 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 IPR2021-00124 Patent 7,043,365 B2 20 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 IPR2021-00124 Patent 7,043,365 B2 21 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 IPR2021-00124 Patent 7,043,365 B2 22 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. IPR2021-00124 Patent 7,043,365 B2 23 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 IPR2021-00124 Patent 7,043,365 B2 24 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 IPR2021-00124 Patent 7,043,365 B2 25 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. IPR2021-00124 Patent 7,043,365 B2 26 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. IPR2021-00124 Patent 7,043,365 B2 27 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. IPR2021-00124 Patent 7,043,365 B2 28 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. IPR2021-00124 Patent 7,043,365 B2 29 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. IPR2021-00124 Patent 7,043,365 B2 30 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 IPR2021-00124 Patent 7,043,365 B2 31 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. IPR2021-00124 Patent 7,043,365 B2 32 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 IPR2021-00124 Patent 7,043,365 B2 33 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 IPR2021-00124 Patent 7,043,365 B2 34 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 IPR2021-00124 Patent 7,043,365 B2 35 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 IPR2021-00124 Patent 7,043,365 B2 36 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. IPR2021-00124 Patent 7,043,365 B2 37 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. IPR2021-00124 Patent 7,043,365 B2 38 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 IPR2021-00124 Patent 7,043,365 B2 39 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 IPR2021-00124 Patent 7,043,365 B2 40 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 IPR2021-00124 Patent 7,043,365 B2 41 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). IPR2021-00124 Patent 7,043,365 B2 42 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. IPR2021-00124 Patent 7,043,365 B2 43 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” IPR2021-00124 Patent 7,043,365 B2 44 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 IPR2021-00124 Patent 7,043,365 B2 45 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. IPR2021-00124 Patent 7,043,365 B2 46 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. IPR2021-00124 Patent 7,043,365 B2 47 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 Copy with citationCopy as parenthetical citation