Borgheiv.HaneyDownload PDFPatent Trial and Appeal BoardSep 4, 201512831956 (P.T.A.B. Sep. 4, 2015) Copy Citation BoxInterferences@uspto.gov Tel: 571-272-9797 Entered: September 4, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Apple, Inc. Junior Party (US 8,284,748 B2) (Inventor: Hooman Borghei) v. X One, Inc. Senior Party (Application No. 13/754,093) (Inventor: Richard D. Haney) ________________ Patent Interference 106,000 (HHB) (Technology Center 2600) ________________ Before RICHARD E. SCHAFER, DEBORAH KATZ, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. JUDGMENT – 37 C.F.R. §41.127(a) Interference No. 106,000 2 In view of the Decision on Motions (Paper __), it is: ORDERED that judgment on priority as to the Count be entered against Senior Party X One, inventor Richard D. Haney and the real party in interest, X One, Inc; FURTHER ORDERED that with respect to Interference 106,000 (HHB), Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 (corresponding to Count 1) of X One’s involved application, U.S. Patent Application No. 13/754,093, are FINALLY REFUSED, 35 U.S.C. 135(a); FURTHER ORDERED that a copy of this Judgment be entered in the files of (1) Apple’s involved patent, U.S. Patent No. 8,284,748 and (2) X One’s involved application, U.S. Patent Application No. 13/754,093; FURTHER ORDERED that if there is any settlement agreement or related documents which have not been filed, attention is directed to 35 U.S.C. §135(c) and 37 C.F.R. §41.205; FURTHER ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office (37 C.F.R. §§ 90.1 and 104.2); and FURTHER ORDERED that attention is directed to Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57 (Fed. Cir. 2015). Interference No. 106,000 3 cc (via email delivery): Attorney for Junior Party – Apple, Inc.: Mathew I. Kreeger, Esq. Mehran Arjomand, Esq. Morrison & Foerster LLP 425 Market Street San Francisco, CA 94105-2482 Email: mkreeger@mofo.com Email: marjomand@mofo.com Attorney for Senior Party – X One Inc.: Robert M. Schulman, Esq. Michael A. O’Shea, Esq. Leonard C. Suchyta, Esq. Yisun Song, Esq. Hunton & Williams LLP 2200 Pennsylvania Avenue Washington DC 20037 Email: rschulman@hunton.com BoxInterferences@uspto.gov Tel: 571-272-9797 Entered: September 4, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Apple, Inc. Junior Party (US 8,284,748 B2) (Inventor: Hooman Borghei) v. X One, Inc. Senior Party (Application No. 13/754,093) (Inventor: Richard D. Haney) ________________ Patent Interference 106,000 (HHB) (Technology Center 2600) ________________ Before RICHARD E. SCHAFER, DEBORAH KATZ, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON MOTIONS - 37 CFR §41.125(a) Interference No. 106,000 2 I. INTRODUCTION Pending before us are the following substantive motions: (1) X One Substantive Motion 1 (Paper 26) and supporting evidence (Exhibits 1001–1013 & Appendices 3–5 1 ) filed on July 11, 2014 for judgment that Apple’s claims are unpatentable over prior art. X One resubmitted Motion 1 (Paper 48) filed on July 18, 2014. Apple Opposition 1 (Paper 59) and supporting evidence (Exhibits 1001–1004, 1007, 1013, 2008–2013, and 2016) filed on September 26, 2014; and X One Reply 1 (Paper No. 69) and supporting evidence (Exhibits 1001–1031) filed on November 14, 2014. (2) Apple Substantive Motion 1 (Paper 45) and supporting evidence (Exhibits 2001–2012) filed on July 11, 2014 under 37 C.F.R. §41.121(A)(1)(iii) for judgment of unpatentability based on lack of written description support. X One Opposition 1 (Paper 56) filed on September 26, 2014; X One corrected Opposition 1 (Paper 63) and supporting evidence (Exhibits 1001–1017) filed on September 26, 2014; and Apple Reply 1 (Paper 71) and supporting evidence (Exhibits 1013, 1018, 2001, 2002, 2007, 2012, and 2017) filed November 14, 2014. 1 See Appendix 3: Claim Chart Comparing US 8,284,748 (“’748 patent”) to US Publication 2006/0270421 issued to Phillips; Appendix 4: Claim Chart Comparing US 8,284,748 (“’748 patent”) to US Publication 2008/0032703 issued to Krumm; and Appendix 5: Claim Chart Comparing US 8,284,748 (“’748 patent”) to US Publication 2006/0223518 issued to Haney. Interference No. 106,000 3 (3) X One Responsive Motion 2 (Paper 51) and supporting evidence (Exhibits 1015–1031) filed on August 8, 2014 to add two (2) new claims to Count 1. Apple Opposition 2 (Paper 60) and supporting evidence (Exhibits 1001, 1013–1019, 1022, 1024, 1030, 1031, 2012, and 2017–2022) filed September 26, 2014; and X-One Reply 2 (Paper 70) and supporting evidence (Exhibits 1001–1031) filed November 14, 2014. (4) X One Miscellaneous Motion (Paper 67) and supporting evidence (Exhibits 1019–1031) filed October 20, 2014 to Exclude Evidence. Apple Opposition (Paper 73) and supporting evidence (Exhibits 1001, 1013–1019, 1022, 1024, 1030, 1031, 2012, and 2017– 2012) filed on December 5, 2014; and X One Reply (Paper 96) and supporting evidence (Exhibits 1001, 1018, 1032, 2012, 2019, and 2020) filed on December 19, 2014. Separately, we note that Senior Party X-One has filed its Priority Statement (Paper 25) on July 11, 2014 but no such statement was filed by Junior Party Apple. Apple does not allege a date of invention prior to the earliest date accorded to X- One (April 4, 2014 – Paper 1). Rather, Apple in effect challenges X One’s standing to prosecute this interference. 37 C.F.R. § 41.201 (indicating that unpatentability of copied claims for lack of written description may deprive the opponent of standing). After a review of all motions, oppositions and replies, we enter decisions on the following: (1) X One Miscellaneous Motion (Paper 67) to disqualify Apple’s expert, Dr. Scott R. Klemmer; (2) Apple Substantive Motion 1 (Paper 45) for Interference No. 106,000 4 judgment that X One’s involved claims lack adequate written description under 35 U.S.C. § 112, first paragraph; and (3) X One Responsive Motion 2 (Paper 51) to add two new claims to Count 1. 37 C.F.R. § 41.125(a). For the reasons discussed below, (1) X One Miscellaneous Motion (Paper 67) to disqualify Dr. Klemmer as Apple’s expert, and (2) X One Responsive Motion 2 (Paper 51) to add two new claims to Count 1 are denied. However, Apple Substantive Motion 1 (Paper 45) is granted. Because Apple Substantive Motion 1 (Paper 45) is granted, and X One Responsive Motion 2 (Paper 51) is denied in favor of Apple, the interference is terminated. Consequently, we need not reach X One Substantive Motion 1 (Paper 26) for judgment that Apple’s claims are unpatentable over prior art. Therefore, X One Substantive Motion 1 (Paper 26) is dismissed as moot. II. BACKGROUND Senior Party X One requested an interference between: (1) Claims 3–6, 8– 10, 12, 13, 18–21, 23–25, 27, and 28 of X One Application No. 13/754,093 (the ‘093 application), and (2) Claims 1–22 of Apple US 8,284,748 B2 (the ‘748 patent). Interference Request (Ex. 2006, pp. 2–6). 37 C.F.R. § 41.202(a). The parties’ subject matter is directed to methods and systems for forming and tracking a location-sharing group in which mobile devices can share and mutually track each other’s locations in the location-sharing group. Ex. 1001, Ex. 2001 at Abstract; Ex. 1016, Ex. 2002 ¶ 10. The parties’ subject matter is represented by a single Count 1, which is Apple Claim 6 of the ‘748 patent or X One Claim 3 of the ‘093 application. Claim 6 of the ’748 patent (Junior Party Apple) is reproduced below: 6. A computer-implemented method performed by one or more data processing apparatus, the method comprising: detecting formation of a location-sharing group between Interference No. 106,000 5 two or more mobile devices; defining a geofence around the location-sharing group, the geofence encloses respective current geographic locations of the two or more mobile devices; tracking a geographic location of the location-sharing group and a geographic coverage of the geofence around the location-sharing group; and providing the geographic location of the location-sharing group to at least one of the two or more mobile devices in the location- sharing group, wherein defining a geofence around the location-sharing group further comprises: determining the respective current geographic locations of the two or more mobile devices; determining a respective coverage radius for each of the two or more mobile devices; determining a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radius for the mobile device; and using the boundary of the combined coverage area as the geofence around the location-sharing group. Paper 6, p. 2, 3 (emphasis added). Claim 3 of the ’093 application (Senior Party X One) is copied verbatim from Claim 6 of the ’748 patent (Junior Party Apple). Similarly, the remaining X One’s claims are copied from Apple ’748 patent, either verbatim, or with the substitution of “geographical area” for “geofence.” Ex. 2012 ¶¶ 11–13; compare Ex. 2002, claims 1–30, with Ex. 2001, claims 1, 3, 6–11, 13–17, and 20–22. All Apple Claims 1–22 (Paper 7; Ex. 1001) and X One Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 (Paper 8; Ex. 2002) have been designated as corresponding to Count 1. Paper 1, pp. 4–5. Interference No. 106,000 6 A. Witnesses Junior Party Apple relies on the testimony of Dr. Scott R. Klemmer: (1) First Declaration of Scott R. Klemmer, Ph.D., in support of Apple Substantive Motion 1 (Paper 45), Ex. 2012; (2) Second Declaration of Scott R. Klemmer, Ph.D., in support of Apple Opposition 1 to X One Substantive Motion 1 (Paper 59), Ex. 2013; and (3) Third Declaration of Scott R. Klemmer, Ph.D., in support of Apple Reply 1 (Paper 71), Ex. 2017. X One relies on the testimony of Dr. Michael F. Goodchild: (1) First Declaration of Michael F. Goodchild, Ph.D., in support of X One Substantive Motion 1 (Paper 48), Ex. 1013; (2) Second Declaration of Michael F. Goodchild, Ph.D., in support of X One Responsive Motion 2 (Paper 51), Ex. 1015; (3) Third Declaration of Michael F. Goodchild, Ph.D., in support of X One corrected Opposition 1 (Paper 63), Ex. 1017; and (4) Fourth Declaration of Michael F. Goodchild, Ph.D., in support of X One Miscellaneous Motion to Exclude Evidence (Paper 67), Ex. 1019. Interference No. 106,000 7 1. Dr. Klemmer Dr. Klemmer testifies that he is an Associate Professor of Cognitive Science and Computer Science & Engineering at the University of California, San Diego, and a Visiting Associate Professor of Computer Science at Stanford University since 2013. Dr. Klemmer testifies that he has (1) a Ph.D. degree in Computer Science, (2) a Master of Science in Computer Science from University of California at Berkeley, and (3) a Bachelor of Arts in Computer Science and Art- Semiotics from Brown University. Ex. 2012 ¶¶ 1–2 & Ex. A. Dr. Klemmer testifies that has over 15 years of extensive experience in human-computer interaction and mobile interaction design, including the use of location-based information. For example, Dr. Klemmer testifies that he has taught classes on mobile interaction design since 2000 at UC San Diego, UC Berkeley, and Stanford, and has published papers and articles in the same field of mobile design and human-computer interaction. 2012 ¶¶ 3–4 & Ex. A. X One disputes Dr. Klemmer’s qualification, via X One Miscellaneous Motion (Paper 67) to exclude evidence, i.e., to disqualify Dr. Klemmer as an expert because, according to X One, Dr. Klemmer is not a person of ordinary skill in the relevant art and, as such, is not competent to offer testimony in this interference proceeding. Paper 67, pp. 1–13. We will address X One Miscellaneous Motion (Paper 67) separately below. 2. Dr. Goodchild Dr. Goodchild testifies that he is an Emeritus Professor of Geography at the University of California, Santa Barbara, and an Affiliate Professor of Geography at the University of Washington since June 2012. Dr. Goodchild testifies that from 2010 to 2012, he was the Chair of Geography, and Director of U.C. Santa Interference No. 106,000 8 Barbara’s Center for Spatial Studies from 2007–2012. Ex. 1013 ¶ 1, Ex. 1012 (CV). Dr. Goodchild testifies that he has a Ph.D. degree in Geography from McMaster University, Ontario, Canada in 1969 and a Bachelor of Arts degree in Physics from Cambridge University, England in 1965. Id. Dr. Goodchild testifies that he has 40 years of experience in spatial studies and geographic information science including geospatial application and location- based services, and has taught classes and published hundreds of papers and articles regarding the same field. Ex. 1012. Apple does not dispute Dr. Goodchild’s qualification to express opinions regarding the technology involved in this interference proceeding. We find Dr. Goodchild to be qualified as an expert regarding the technology involved in this interference. III. X ONE MISCELLANEOUS MOTION TO EXCLUDE EVIDENCE (PAPER 67) X One Miscellaneous Motion (Paper 67) seeks to exclude evidence, i.e., to disqualify Dr. Scott R. Klemmer as Apple’s expert because, according to X One, Dr. Klemmer: (1) is not a person of ordinary skill in the relevant art, (2) is not competent to offer testimony in this interference proceeding and, as such, (3) Dr. Klemmer’s testimony (Ex. 2012, Ex. 2013, and Ex. 2017) in its entirety should not be admissible under Federal Rules of Evidence (“FRE”) 702. Paper 67, pp. 1–13. Although X One and Apple argue about how to determine the level of skill in the art, for purposes of this interference, we find the determination of level of skill in the art in terms of degrees or the number of years of specific experience in location-based services obtained is less helpful than defining it in terms of what such a person would have known and what the person would have been able to do. Interference No. 106,000 9 Argyropoulos v. Swarup, 56 USPQ2d 1795, 1807 (BPAI 2000). It is not even necessary for us to resolve, between Dr. Klemmer and Dr. Goodchild, who is correct and who has the appropriate level of skill in the art. Rather, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art); In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995) (level of skill in the art can be determined by reference to prior art of record). Nevertheless, X One bears the burden of proof. See 37 C.F.R. § 41.120(b). The Federal Rules of Evidence (FRE) generally apply to interference proceedings, 37 C.F.R. § 41.152(a), and FRE 702 outlines the requirements for a witness to testify as an expert: A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. FRE 702. X One argues Dr. Klemmer is not “qualified as an expert by knowledge, skill, experience, training, or education.” Paper 67, pp. 1–12. According to X One, neither Dr. Klemmer’s expertise, academic degrees, nor publications are relevant to location-based services (id. at 3–8). X One also argues that Dr. Klemmer’s testimony is unreliable, inconsistent, and misleading because, according to X One, Dr. Klemmer is unable to explain how the different embodiments of Apple’s ’748 patent function (id. at 8–12, citing Klemmer Interference No. 106,000 10 Deposition, Ex. 1018, at, inter alia, 102:19–23; 147:5, 147:16; 149:12; 152:6; 154:21; 160:12; 161:2; 164:14; 168:5; 170:8; see also Paper 96, pp. 2–5). We are not persuaded that Dr. Klemmer is unqualified to be an expert in this proceeding because Apple presents evidence showing he is. (See Apple Opp. Paper 73, at 8-11). For example, Apple notes that Dr. Klemmer authored several publications, including Lash-Ups: A Toolkit for Location-Aware Mash-Ups (Ex. 2020), Papier-Mache: Toolkit Support for Trangible Input (Ex. 1022 at 315, 337– 39), and (3) ButterflyNet: A Mobile Capture and Access System for Field Biology Research (Ex. 1030), which are related to location-aware applications and location-based service or tracking programs. Despite X One’s arguments about these references (see Paper 70, p. 2–4), we are persuaded that they demonstrate Dr. Klemmer’s expertise in location-based services. To the extent relevant to his qualifications, we do not find Dr. Klemmer’s testimony unreliable, inconsistent, or misleading, as X One alleges. For example, Dr. Klemmer’s testimony regarding the difference between the “coverage radius” and the “user-specified coverage radius” is consistent with the specification of Apple’s ’748 patent. Paper 73 at 11–15 (citing Ex. 2012 ¶ 3; Ex. 1018 at 59:7–14). As such, we are not persuaded by X One’s arguments that Dr. Klemmer’s experience is inadequate to establish his lack of “knowledge, skill, experience, training, or education,” or “specialized knowledge” under FRE 702. We further note that X One’s arguments addressing Dr. Klemmer’s specialized knowledge in location-based services and his testimony in this regard goes to the weight to be given to Dr. Klemmer’s testimony, not to its admissibility. See 37 C.F.R. § 41.158(a) and Standing Order (SO) ¶ 155.2.2 (stating “[a] motion to exclude is not the place to challenge the sufficiency of the evidence to prove a particular fact). The Board may assign the appropriate weight to the testimony Interference No. 106,000 11 offered by Dr. Klemmer. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board was well within its discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so.”). We will determine the appropriate weight to be given to Dr. Klemmer’s testimony where relevant below. For the foregoing reasons, we conclude that X One has not met its burden of showing that Dr. Klemmer’s testimony (Ex. 2012, Ex. 2013, and Ex. 2017) should be excluded. Therefore, X One’s Motion to Exclude (Paper 67) is denied. Based upon Dr. Klemmer’s experience and training, we also hold that Dr. Klemmer is qualified to render opinions on the subject matter involved in this interference. IV. APPLE MOTION 1 (PAPER 45) FOR LACK OF WRITTEN DESCRIPTION Apple Substantive Motion 1 (Paper 45) moves for judgment against all claims, i.e., Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 of X One’s involved application 13/754,093 based on an alleged lack of a written description under 35 U.S.C. § 112, first paragraph. Specifically, Apple contends X One’s ’093 application does not provide written description support for several limitations, including: (1) “determining a respective coverage radius for each of the two or more mobile devices” as recited in independent claims 3, 8, 18, and 23 of X One’s ’093 application; (2) “defining a geofence around a location-sharing group” as recited in independent claims 3, 8, 12, and 13 of X One’s ’093 application; (3) “detecting that a point of interest has crossed and entered the geofence of the location-sharing group” and “providing a Interference No. 106,000 12 notification to at least one of the two or more devices about the point of interest” as recited in independent claims 12 and 13 of X One’s ’093 application; (4) “defining a geographical area around a location-sharing group” as recited in independent claims 18, 23, 27, and 28 of X One’s ’093 application; and 5) “detecting formation of a location-sharing group between two or more mobile devices” as recited in each of the independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application. Paper 45, pp. 11–20. A. FINDINGS OF FACTS We make the following findings of facts (“FFs”) to resolve issues presented in Apple Substantive Motion 1 (Paper 45). These FFs, as well as others made elsewhere in the Decision, are supported by at least a preponderance of the evidence on the record. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). 1. State of the Art 1. Location-based services are well known to track geographic locations of users of mobile devices (e.g., mobile phones, including global position systems “GPS”), as acknowledge by X One’s involved application (the ’093 application). Ex. 1016 ¶¶ 4–6. 2. For example, “On Star” and Mercedes Benz TeleAid Services allow a service provider to track vehicles equipped with GPS receivers with cellular phone capability and to communicate with drivers. Id. at ¶ 4. Other commercial service providers also allow parents to track the locations of their children. However, Interference No. 106,000 13 these location-based services are known as “one way” location sharing because the location services are set up between a service provider and mobile devices, and are not set up to share location information between mobile devices. Id. at ¶ 4. 3. “Two way” location sharing services are also known to allow location-sharing among users of mobile devices who have agreed to become “location-sharing friends” with one another, via conventional location-sharing applications, as acknowledged by Apple’s involved patent (the ’748 patent). Ex. 2001, 1:18–19, 6:49. For example: “two users can register with a location information server and agree to share their geographical locations with each other. The location information server maintains a database of location information submitted by the respective mobile devices associated with the two users. The location information server will forward the location information of one user to the other user either upon request, on a schedule, or upon receiving a submission of a location update. Each user can view the location-sharing friend’s location on a map displayed on the user’s own mobile device.” Id. at ¶ 1:20–30. 4. The conventional process of forming a location-sharing group between mobile devices, via a location service server, is shown in Fig. 1A of Apple’s ’748 patent, as reproduced below: Fig. 1A of Apple’s ’748 patent shows a conventional process of forming a location-sharing group between mobile devices 100, 102, via location service server 104. Interference No. 106,000 14 As shown in Fig. 1A of Apple’s ’748 patent, the conventional process requires four-steps, including: “(1) device 100 sends a location-sharing request to the location information server 104 identifying device 102; (2) the location-information server 104 forwards the request to device 102; (3) device 102 responds to the location-information server 104 indicating consent to the location-sharing with device 100; and (4) the location-information server 104 forwards a confirmation to device 100 indicating the acceptance from device 102. After the four-step setup process, the location- information server 104 establishes the location-sharing group between device 100 and device 102, and starts tracking and sharing the locations of the two devices.” Id. at 7:40–53. 5. However, the conventional process of setting up a location-sharing group is said to be cumbersome and time consuming because “each user would have to either send a request to or respond to requests from all other users in the group through the central server.” Id. at 6:66–67, 7:11–13 (emphasis added). Such a conventional process is also said to be unsuitable for ad hoc purposes (e.g., without the assistance of a central server; see Ex. 2001 Abstract), for example, where several users run into one another at one location by chance and decide to travel in close proximity together to their destination and, if one of the users gets off-track, others in the group can alert and help that user get back on track. Id. at 7:1–8. 2. Apple’s Involved Patent (the ’748 Patent) 6. Apple ’748 patent discloses location-sharing among mobile devices (e.g., iPhones) in a location-sharing group and, in particular, processes of set up an Interference No. 106,000 15 ad hoc location-sharing group (without the help of a central server, i.e., location service server) and then tracking mobile devices in the location-sharing group, “such that the users can set up location-sharing [directly between mobile devices] at the time such sharing is needed and terminate the location tracking completely after the purpose for location-sharing has been served.” Ex. 2001, Abstract, 7:23– 27, 58–62, and Figs. 1B–1C, 2A–2G, 3, 10–11. 7. According to Apple, ad hoc location-sharing is formed when consent- gathering “pairing action” between two mobile devices (including a host device and an invited device) is performed without the help of a central server (e.g., location service server), leading to faster and easier formation of a location-sharing group. Id. at 7:59–62 (emphasis added). For example: “one user in the group can serve as a host and contacts other users in the group directly (e.g., without involving the location- information [server]) to obtain their consents to join the location-sharing group … through various available means, e.g., face-to-face communication, short-range wireless communications, SMS, or email, telephonic communication, Voice over IP (VoIP) communication, and so on. The invited users who wish to join the group can provide his or her consent by performing a predetermined pairing action on his or her mobile device, where the pairing action does not involve the central server (e.g., the location-information server).” Id. at 7:64–8:10 (emphasis added). 8. Apple’s Figs. 1B–1C show example processes of setting up an ad hoc location-sharing group, as reproduced below with additional markings for illustration: Interference No. 106,000 16 Apple’s Figs. 1B–1C show example processes of setting up an ad hoc location- sharing group between mobile devices 100, 102 without the help of the location service server 104. As shown in Apple’s Figs. 1B–1C, device 100 can serve as a host and send an invitation directly to device 102, via SMS or email, to join a location-sharing group, and device 102 can consent the invitation, via SMS or email, without involving the location service server 104. Id. at 7:64–8:10. 9. According to Apple: “[i]n some implementations, the pairing event can be performed by forming a short-range wireless connection between the host device and an invited device. The host device can serve as a base station or master device for a short-range wireless network, and each invited device can form a short-range network connection to the host device through particular network protocols. For example, the host device can serve as a Bluetooth master device, and each invited device can connect to the master device according to the Bluetooth communication protocol. For another example, the host device can serve as a Wi-Fi network base station, and each invited device can connect to the host device according to various Wi-Fi supported network protocols… In some implementations, the short-range wireless network connection can be established automatically, when the invited device is brought within a predetermined range of the host device... Interference No. 106,000 17 In some implementations, if the host user wants to invite multiple users to the location-sharing group, the host user can cause the host device to broadcast the invitation, and all location-aware mobile devices within a specified range of the host device would be able to receive the invitation and respond to the invitation.” Id. at 9:5–18, 33–36, 10:63–67 (emphasis added). 10. After receipt of the consent-gathering “pairing action” between mobile devices to form a location-sharing group, the location service server 104, shown in Apple’s Figs. 1B–1C, can start tracking the locations of each mobile device in the group, and provide a visual display of current locations of each participating device in an ad hoc location-sharing group on a map, via a user interface (UI) of the mobile device, shown Apple’s Fig. 2A, as reproduced below with additional markings for illustration. Apple’s Fig. 2A shows an example user interface (UI) 200 that displays current locations of each participating device in an ad hoc location-sharing group. Interference No. 106,000 18 As shown in Apple’s Fig. 2A, the user interface (UI) 200 displays marker 204 (e.g., having a different color or shape) to show current location of each participating device in the location-sharing group on street map 202, and indicates the coverage radius associated with each mobile device based on its communication capabilities in the form of “circular perimeter” 206 drawn around each marker 204 that represents the current location of a respective device in the location-sharing group. Id. at 11:31–37, 12:1–17, 14:25–32. 11. According to Apple, “the radius of the circular perimeter 204 is the coverage radius for the participating device in the location-sharing group.” Id. at 14:32–34. In particular, Apple defines: “[a] coverage radius of a device is a parameter that can be used to describe the range that a user of the device is able to maintain a desired level of communication with another user or device in the group.” Id. at 13:19–23 (emphasis added). 12. In some implementations, “the coverage radius of a device can be determined according to the distance range of the type of network connections (e.g., Bluetooth connection or WiFi connection) that the device can maintain with another device in the location-sharing group. In some [other] implementations, the coverage radius of a device can be determined based on the distance range of the type of communications (e.g., voice, visual, or gestural communications) that a user of the device wishes to maintain with another user in the location-sharing group.” Id. at 13:31–40 (emphasis added). 13. For example, if Bluetooth connection is used, “the coverage radius of each device can be the distance range within which the Bluetooth communication can be maintained Interference No. 106,000 19 between the devices. For example, two class 1 Bluetooth devices can maintain a connection within a distance of approximately 100 meters; and two class 2 Bluetooth devices can maintain a connection within a distance of approximately 10 meters. Therefore, the coverage radius of a class 1 Bluetooth device can be set to 50 meters, while the coverage radius of a class 2 Bluetooth device can be set to 5 meters, for example.” Id. at 13:49–52 (emphasis added). 14. However, if other type of communications (e.g., voice, visual, or gestural communications) is used, for example, when users are within visual range: “the two users can specify such preference to the location information server (e.g., in the consent notification sent to the location-information server) and the coverage radius of each user can be set to a value appropriate for maintaining visual contact given the geographic conditions of the user’s current locations.” Id. at 13:53–60 (emphasis added). 15. In other words, “the coverage radius of each device in a location- sharing group can be specified by the users of the device and provided to the location-information server.” Id. at 13:66–14:3 (emphasis added). For example, when the users are within visual range in a crowded area or a theme park, “parents can specify a coverage radius of 20 meters for themselves, while each child within the family can only specify a coverage radius of 5 meters.” Id. at 14:62–65, 15:6– 11. In this context, “the coverage radius is a user-specified distance.” Id. at 21:11–14 (emphasis added). 16. In addition to the use of marker 204 and circular perimeter 206, i.e., the coverage radius of each device within the location-sharing group, Apple also describes defining a geofence to enclose current locations of all participating Interference No. 106,000 20 devices within the location-sharing group on a map 202, as shown in Apple’s Figs. 2B–2G, as reproduced below with additional markings for illustration. Apple’s Figs. 2B–2C show defining a geofence 208a–208b to enclose current locations of all participating devices indicated by markers 204a–204c in the location-sharing group. As shown in Apple’s Fig. 2B, the geofence 208a encloses the current locations of all participating devices indicated by markers 204a–204c in the location-sharing group by at least the coverage radii of the devices. Id. at 14:51–54, 60–62 (emphasis added). If a device represented by marker 204c has moved from a first location, shown in Apple’s Fig. 2B to a second location, shown in Apple’s Fig. 2C, “the map 202 can show the current locations of all three participating devices (as indicated by the markers 204a-c), and their respective coverage area (as indicated by the circles 206a- c). In addition, the geofence 208b is stretched and reshaped to enclose the location of all participating devices by at least the coverage radius of each device.” Id. at 15:22–32. 17. In particular, and for purposes of this interference, Apple defines: “[a] geofence of a location-sharing group is the boundary of an area that encloses the respective location of each participating Interference No. 106,000 21 device in the location-sharing group by at least a coverage radius of the participating device.” Id. at 13:16–19 (emphasis added). 18. According to Apple, “the geofence can be computed by a software application executing on each participating device based on the location and coverage radius information of all participating devices received from the location- information server.” Id. at 15:10–13. 19. In addition, multiple location-sharing groups can also be presented on the map 202, shown in Fig. 2E, as reproduced below with additional markings for illustration. Apple’s Fig. 2E shows multiple location-sharing groups and defining geofences 230, 234 to enclose locations of all participating devices in each group. 20. According to Apple, an alert can be provided if one or more participating devices are departing the location-sharing group. Id. at 16:63–64. Likewise, if the location-sharing group is in proximity of a point of interest (e.g., coffee shop, tourist destination or train station), an alert (e.g., flashing or sound) Interference No. 106,000 22 can also be provided to the devices in the location-sharing group when the point of interest crosses the geofence 208a, shown in Apple’s Fig. 2F, as reproduced below with additional markings for illustration. Apple’s Fig. 2G shows a point of interest (e.g., train station) 238 entry the geofence 208a and suggested routes provided for each device that leads to the point of interest 238. 21. Apple’s process for tracking and providing the location of an ad hoc location-sharing group is shown in Fig. 3, as reproduced below: Interference No. 106,000 23 Apple’s Fig. 3 shows an example process for tracking and providing the location of an ad hoc location-sharing group. 22. In particular, Apple’s geofence is defined around the location-sharing group in specific steps as described in connection with Apple’s Fig. 5, reproduced below with additional markings for illustration: Interference No. 106,000 24 Apple’s Fig. 5 shows an example process for defining a geofence around the location-sharing group. As shown in Apple’s Fig. 5, “a respective coverage radius is determined for each of the mobile devices (504). Then, a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radius for the mobile device can be determined (506). Then, the boundary of the combined coverage area can be used as the geofence around the location-sharing group (508).” Id. at 20:59–21:3. 23. According to Apple, an example location-aware mobile device 1000 equipped with a location-sharing application, known as “Friend Finder” 1052 providing functionalities of a location-sharing service in its operating environment is shown in Apple’s Figs. 10–11, as reproduced below with additional markings for illustration. Interference No. 106,000 25 Figs. 10–11 show a location-aware mobile device 1000 equipped with a location- sharing application “Friend Finder” 1052 and communicates with other mobile devices in its operating environment 1100. As shown in Apple’s Figs. 10–11, each mobile device 1000 is equipped with several features, including, for example: (1) a location-sharing application (“Friend Finder”) 1052 for activating the location-sharing service, and (2) one or more known wireless communication subsystems designed to communicate with other mobile devices over different types of networks, including, for example, one or more wired/wireless networks 1110, shown in Fig. 11 (e.g., cellular network 1112 and/or wide area network 1114, via gateway 1116 or access device 1118). Id. at 24:1–3, 25:26–47. The location-sharing application 1052 provides functionalities associated with: “signing up for a location-sharing service, selecting other users (e.g., friends and/or contacts of the user) with whom that the user wishes to share location, and managing various aspects of Interference No. 106,000 26 location-sharing of the mobile device 1000. The mobile device 1000 can be in communication with a location information server [i.e., location service 1160, shown in Fig. 11] to receive location information of other devices that are currently sharing locations with the mobile device 1000. The mobile device 1000 can also be in communication with the location information server [i.e., location service 1160, shown in Fig. 11] to provide its own location to the location information server.” Id. at 24:3–14. 24. According to Apple, the wireless communication subsystems may include radio frequency receivers and transmitters and/or optical (e.g., infrared) receivers and transmitters; however, the specific design and implementation of the communication subsystem can depend on the communication network(s) over which the mobile device 100 is intended to operate. Id. at 26:50–56. For example, “a mobile device 1000 may include communication subsystems 1224 designed to operate over a GSM network, a GPRS network, an EDGE network, a Wi-Fi or WiMax network, and a Bluetooth™ network.” Id. at 26:57–60. “The mobile device 1000 can also include one or more wireless communication subsystems, such as 802.1010b/g communication device 1086, and/or Bluetooth™ communication device 1088. Other communication protocols can also be supported, including other 802.x communication protocols (e.g., WiMax, Wi-Fi, 3G), code division multiple access (CDMA), global system for mobile communications (GSM), Enhanced Data GSM Environment (EDGE), etc.” Id. at 25:15–22. 25. In other words, mobile devices as described by Apple are capable of operating over cellular and other wireless networks (e.g., GSM network, GPRS network, EDGE network, Wi-Fi or WiMax network, and Bluetooth™ network) Interference No. 106,000 27 using different communication protocols for normal communications and tracking locations of mobile devices. Such communication capabilities are expected from these mobile devices, including those disclosed by Apple and X One. However, in the context of an ad hoc location-sharing group as disclosed by Apple’s ’748 patent, these mobile devices can locate and mutually track each other in the location-sharing group based on example embodiments of short-range communications capabilities of these mobile devices using: (1) the distance range of the type of network connections (e.g., Bluetooth or WiFi connections), or (2) the distance range of the type of communication channels (e.g., short-range radio, voice, visual, or gestural communications). Id. at 13:31–40, 17:1–4. 3. X One’s Involved Application (the ’093 Application) 26. Similar to Apple ’748 patent, X One’s ’093 application also discloses location-sharing among mobile devices within a location-sharing group in the context of a “Buddy Watch” (synonym for Buddy Tracker TM ) system in which mobile devices having Buddy Tracker TM software installed therein: (1) set up a location-sharing group of members and (2) mutually track each other’s locations in the location-sharing group. Ex. 2002 ¶¶ 10, 14–15, and Figs. 1, 2A, 4. 27. X One’s ’093 application also describes: (1) “user can change things on the fly in the field such as: adding groups and members; adding instant buddies, changing the size of the area in which their buddies can be tracked, enabling or disabling the location information sharing information without disabling the phone, etc.,” and (2) location information will be shared [among persons on the Buddy List TM ] only so long as the phone is on and in an area where the device can receive Interference No. 106,000 28 a GPS signal and send the phone’s coordinates out on the cellular network (and the location sharing capability is enabled). Id. at ¶¶ 14–15 (emphasis added). 28. For purposes of this interference, X One’s Figs. 1, 2A, and 4 show the Buddy Tracker TM software, via a user interface (UI), to allow a user to track one or more buddies (friends), to form a location-sharing group of friends and mutually track and share locations of friends in the location-sharing group over existing cellular networks (see Fig. 2A), as reproduced below with additional markings for illustration: Fig. 1 Fig. 2A Fig. 4 As shown in X One’s Figs. 1 and 4, the user interface (UI) screen shows a start-up page of the Buddy Tracker TM software and an example location of a friend within cellular coverage in terms of (1) last update, (2) distance from the user, and (3) last known direction, latitude, longitude and speed. Id. at ¶¶ 61, 64, 66, 76, 91– 10. 29. According to X One, if the Mapit feature 22 is selected, as shown in Fig. 4, the user is taken to the Mapit (map) page where positions of friends within a Mapit screen radius set up in the preferences of a certain center point XXX within radius YYY. Id. at ¶¶ 62–63. In addition, X One’s Mapit screen radius can be Interference No. 106,000 29 automatically set or manually set by the user, shown in Fig. 28, as reproduced below: X One’s Fig. 28 shows a user interface (UI) created by Buddy Tracker TM software to allow a user to set the Mapit screen radius and its “center” for the Mapit feature. As shown in X One’s Fig. 28, the certain radius (YYY) is referenced to a center point (XXX) on the map chosen by a user. Id. at ¶¶ 62–63, and Fig. 2D. However, such a radius represents a defined distance from a fixed geographic point for purposes of scaling the map display. Id. at ¶ 50 (emphasis added). In particular, X One describes: “When a member of a group specified by a Buddy in that group for Mapit display is outside the radius set up in a Group Map Size configuration entry, then that member is split from the group and will not appear on the map of the group. However, that member which has been split from the group will have an entry in a distinctive color such as dark green on the list of active users in the group. Changing the Group Map Size configuration entry to a larger size may allow the split member to be displayed. If the location of the split member must be viewed but the Group Map Size is not to be changed, clicking on the member of the group which has been split from the Buddy List will cause the Mapit display to change to the locale of the split member and display the member's location on the map so long as the split member’s Buddy Watch status is active.” Interference No. 106,000 30 Id. at ¶ 120 (emphasis added). 30. X One’s ’093 application further describes the members of the group are connected by a “translucent shaped outline” encompassing all the points representing positions on the Mapit display. Id. at ¶ 77. “If the group is spread too far apart to be shown on a single Mapit display, then the shaped outline for the group is not shown. If the Mapit display is zoomed out, the translucent group outline returns when all members of the group can be shown on a single screen.” Id. 31. Similarly, X One’s ’093 application also describes the use of a “map rooms” feature, shown in Fig. 30, to allow a user to define, delete and use map rooms for closed proximity groups, open proximity groups, etc., and to specify a radius associated with a zone of either a closed or open proximity map room. Id. at ¶ 63. X One’s Fig. 30 is reproduced below with additional markings for illustration. Interference No. 106,000 31 X One’s Fig. 30 shows a user interface (UI) created by Buddy Tracker TM software to allow a user to set a user-specified radius associated with a zone of either a closed proximity map room (CPG) or an open proximity map room (OG) and its “center” for the “map rooms” feature. As shown in X One’s Fig. 30, a user can set up a user-specified radius associated with a zone of either a closed proximity map room (CPG) or an open proximity map room (OG). In particular, X One describes: “For closed proximity group map rooms, listed users can set their preferences to automatically enter or be alerted that they are in the Zone and manually decide to enter. For Open Proximity Group Map Rooms, anyone can join by opting in from their phone or from a sponsor’s website. Upon entry, they can view and be viewed by all other members in the map room. Proximity rooms are useful to find and be found by friends attending an event.” Id. at ¶ 63 (emphasis added). Interference No. 106,000 32 32. In view of FF 25–30, X One’s ’093 application describes all communications between mobile devices with the location-sharing group as taking place over the cellular networks. Id. at ¶¶ 11–12, 95, 124–125. 33. X One also acknowledges that the precise phrase “coverage radius” as well as the term “geofence” do not appear anywhere in the ’093 application. Paper 63 at A-2, FFs 11, 15, 21. However, the term “radius” appears several times in X One’s ’093 application in the context of Mapit screen radius, shown in X One’s Fig. 28, and “Map Rooms” feature, shown in X One’s Fig. 30. B. ANALYSIS 1. As an initial matter, we note that all claims --Claims 3–6, 8–10, 12, 13, 18– 21, 23–25, 27, and 28-- of X One’s involved application (the ’093 application) were copied, either verbatim, or substantially verbatim with only the substitution of “geographical area” for “geofence” from Apple’s ’748 patent. Ex. 2012 ¶¶ 11–13; compare Ex. 2002, claims 1–30, with Ex. 2001, claims 1, 3, 6–11, 13–17, and 20– 22. As such, X One Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 must be interpreted in the context of the specification of Apple’s disclosure for purposes of determining compliance with the written description requirement of 35 U.S.C. § 112, first paragraph. See Agilent Tech., Inc. v. Affymetrics, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (“[W]hen a party challenges a written description for the interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language”). Claim terms of Apple’s ’748 patent are given their broadest reasonable construction as they would be understood by one of skill in the art in light of the specification. Rolls-Royce PLC v. United Techn. Corp., 603 F.3d 1325, 1330 (Fed. Interference No. 106,000 33 Cir. 2010). However, “[t]here are only two exceptions to this general rule: (1) when a patentee sets out a definition and acts as his own lexicographer or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Otherwise, claim terms are accorded their “ordinary and customary meaning” in the light of the specification that “the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d at 1313 (Fed. Cir. 2005) (en banc). 2. Whether the descriptive portion of a specification contains a written description of claimed subject matter is an issue of fact. Chen v. Bouchard, 347 F.3d 1299, 1304 (Fed. Cir. 2003); In re Alton, 76 F.3d 1168, 1171–72 (Fed. Cir. 1996). In order to satisfy the written description requirement under 35 U.S.C. § 112, first paragraph, the specification must convey with reasonable clarity to those of ordinary skill in the art that as of the filing date of the application the inventor disclosed the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Pandrol USA, LP v. Airboss Ry. Products, Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005). The purpose of the written description requirement is to prevent applicants from later asserting that they invented that which they did not. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313 (Fed. Cir. 2003). However, an applicant does not have to utilize any particular form of disclosure to describe the subject matter claimed, but “the description must clearly allow persons of ordinary skill in the art to recognize that Interference No. 106,000 34 [the applicant] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). Likewise, the language in the written description does not have to be in the exact same words, in ipsis verbis, as the language at issue in the corresponding claim. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Equally true is that obviousness is not the test for written description. In other words, a description that simply renders obvious a claimed invention is not sufficient to satisfy the written description requirement. Lockwood v. American Airlines Inc., 107 F.3d 1565 (Fed. Cir. 1997). The question is whether the written description objectively tells the person of ordinary skill that the inventor contemplated the subject matter now claimed. 3. As the moving party, Apple bears the burden of proof to demonstrate entitlement to the relief requested. 37 C.F.R. § 41.121(b). To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if unrebutted, it would justify the relief sought. 37 C.F.R. § 41.208(b). The applicable standard of proof is by a preponderance of the evidence. See, e.g., Bilstad v. Wakalopulos, 386 F.3d 1116, 1129 (Fed. Cir. 2004); Bruning v. Hirose, 161 F.3d 681, 685 (Fed. Cir. 1998). 4. Apple argues that five (5) limitations of X One’s Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 lack written description support, including: (1) “determining a respective coverage radius for each of the two or more mobile devices” as recited in independent claims 3, 8, 18, and 23 of X One’s ’093 application; Interference No. 106,000 35 (2) “defining a geofence around a location-sharing group” as recited in independent claims 3, 8, 12, and 13 of X One’s ’093 application; (3) “detecting that a point of interest has crossed and entered the geofence of the location-sharing group” and “providing a notification to at least one of the two or more devices about the point of interest” as recited in independent claims 12 and 13 of X One’s ’093 application; (4) “defining a geographical area around a location-sharing group” as recited in independent claims 18, 23, 27, and 28 of X One’s involved application; and 5) “detecting formation of a location-sharing group between two or more mobile devices” as recited in each of the independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application. Paper 45 at 4–20. Claim Construction for Written Description Support As an initial matter, we note analysis of written description depends on the meaning of several claim terms from independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application that correspond to the Count. Paper 1 at p. 4. The disputed claim terms are: (1) “coverage radius”, (2) “geofence”, and (3) “geographical area” as recited in the independent claims of X One’s ’093 application. As per Agilent, these disputed terms are to be construed in light of the host disclosure, i.e., Apple’s ’748 patent and file history, which we will address each claim term identified by Apple in turn. Interference No. 106,000 36 1. “Coverage Radius” Independent claims 3, 8, 18, and 23 of X One’s ’093 application each recite “determining a respective coverage radius for each of the two or more mobile devices.” (Ex. 2007 at claims 3, 8, 18, 23) (emphasis added). Apple argues because Apple ’748 patent provides an explicit definition for the term “coverage radius of a device is a parameter that can be used to describe the range that a user of the device is able to maintain a desired level of communication with another user or device in the group,” Apple’s explicit definition of that term should control. Paper 45, pp. 5–7 (citing Ex. 2001 at 13:19– 22 (emphasis added). According to Apple, the term “coverage radius” as defined by Apple’s ’748 patent is also consistent with other sections of Apple’s specification describing the “coverage radius” associated with each mobile device based on its communication capabilities, i.e., short-range wireless communications, including, for example: (1) “the coverage radius of a device can be determined according to the distance range of the type of network connections (e.g. Bluetooth connection or Wi-Fi connection) that the device can maintain” and (2) for visual communications between mobile devices, “the coverage radius of each user can be set to a value appropriate for maintaining visual contact given the geographic conditions of the user’s current locations.” Id. at 6–7 citing (Ex. 2001 at 13:31–40, 57–62). Apple also argues the “range” as used in its definition refers to the maximum distance between the device and other devices in the group for which “the device is able to maintain a desired level of communication with another use or device in the group.” Id. at 6. Accordingly, Apple argues the term “coverage radius” should be construed to mean “a parameter that can be used to describe the range (that is, the maximum distance between the device and another device in the group) that a user Interference No. 106,000 37 of the device is able to maintain a desired level of communication with another user or device in the group.” Id. at 7. Relying on Dr. Goodchild’s testimony (Ex. 1017), X One responds that Apple’s proffered construction is improper because such a construction: (1) is limited to Bluetooth and Wi-Fi implementations to the exclusion of all other forms of communication, including cellular implementation as described by X One’s specification, and (2) ignores other embodiments described by Apple ’748 patent, including an embodiment that specifies that “the coverage radius is a user-specified distance.” Paper 63, pp. 4–12 (citing Ex. 1001, 9:12–20, 13:19–23, 13:66–14:11, 21:11–14). In particular, X One argues: (1) Apple’s ’748 patent does not limit the “coverage radius” to only Bluetooth and Wi-Fi implementations to the exclusion of all other types of communication protocols; (2) the specification and prosecution history of ’093 application are devoid of “clear statement of scope” that limit the communication protocol to Bluetooth or Wi-Fi, and instead describe Bluetooth and Wi-Fi only as exemplary: “The mobile device 1000 can also include one or more wireless communication subsystems, such as 802.1010b/g communication device 1086, and/or Bluetooth™ communication device 1088. Other communication protocols can also be supported, including other 802.x communication protocols (e.g., WiMax, Wi-Fi, 3G), code division multiple access (CDMA), global system for mobile communications (GSM), Enhanced Data GSM Environment (EDGE), etc.” Id. at 7 (citing Ex. 1001, 25:15–22) (emphasis added). According to X One, a skilled artisan would understand and appreciate that (1) the other enumerated communication protocols (e.g., 3G, CDMA, GSM, EDGE) support cellular communications and do not apply to Wi-Fi/Bluetooth, and Interference No. 106,000 38 (2) location data can be shared via communication protocols other than Bluetooth/Wi-Fi. Id. (citing Ex. 1017 ¶¶ 20–21). X One further argues Apple’s proffered construction is not supported by Apple’s ’748 patent. According to X One, Apple’s ’748 patent describes: (1) a location-sharing group where a user of a mobile device can share his location with other users of other mobile devices, and (2) routing information is communicated to the mobile device to return to the group when that device has strayed away from the group, i.e., outside the location-sharing group. Id. at 10 (citing Ex. 1001, 6:7– 41, 21:41-53 (“a suggested route can be provided to at least one of the mobile devices currently participating in the location-sharing group”)). However, Apple’s alleged narrow construction of “coverage radius” requires that there is no communication outside the location-sharing group – i.e., where there is no overlap in a Bluetooth or Wi-Fi coverage radius. Id. According to X One, Fig. 2C of Apple’s ’748 patent shows another example of how Apple’s construction of “coverage radius” is not supported by the specification of the ’748 patent, as reproduced below with additional markings for illustration. Interference No. 106,000 39 Apple’s Fig. 2C illustrates a geofence 208b that encloses the location of all of the participating devices (204a, b and c) by at least the coverage radius of each device (respectively, 206a, b and c). X One argues under Apple’s alleged narrow construction of “coverage radius,” mobile device 204c cannot communicate directly with mobile device 204 in any manner because their coverage radii do not overlap, thereby defeating the purpose of Apple’s invention to allow all mobile devices in the location-sharing group to share their locations. Id. at 11–12 (emphasis added). Dr. Goodchild further testifies: “the purported definition of ‘coverage radius’ … does not refer to ‘maximum’ at all, and improperly reading a ‘maximum’ limitation into the purported definition would exclude another embodiment of the invention discussed in the very next column of the ‘748 patent. HX 1001, 13:66-14:11 (“the coverage radius ... can be specified by the users of the device… ”) Ex. 1017 ¶¶ 14–15. Based on Dr. Goodchild’s testimony, X One argues the term “coverage radius” should be construed to mean “a distance (which is a user-specified Interference No. 106,000 40 distance) for a mobile device that provides for that device’s inclusion in a location- sharing group and that allows the device to share location information with other members in the location-sharing group.” Paper 63, pp. 5–6 (citing Ex. 1017 ¶ 17). Upon reviewing the host disclosure, i.e., Apple’s disclosure and file history as per Agilent, we agree with Apple in part. However, we are not persuaded by X One’s arguments and proffered construction. Nor do we find Dr. Goodchild’s testimony credible on these points. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations . . . and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). First, as correctly recognized by Apple, when the specification of a patent contains a “special definition given to a claim term by the patentee,” that definition governs. Phillips, 415 F.3d at 1316, 75 U.S.P.Q. 2d at 1329. “The word ‘is’” following a claim term “may ‘signify that a patentee is serving as its own lexicographer.’” Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (quoting Abbott Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1210 (Fed. Cir. 2007)). Here, Apple ’748 patent provides an explicit definition for the term “coverage radius”: “[a] coverage radius of a device is a parameter that can be used to describe the range that a user of the device is able to maintain a desired level of communication with another user or device in the group.” Ex. 2001 at 13:19–23 (emphasis added); FF 11. Apple’s expert, Dr. Klemmer further testifies that Apple’s explicit definition is consistent with the specification of Apple’s ’748 patent. Ex. 2012 ¶¶ 19–27. For example, Dr. Klemmer testifies: (1) “the radius of each of the dotted circles in Interference No. 106,000 41 Figures 2A through 2C and 2F through 2G is the coverage radius of each device, and the dotted circles defined based on the coverage radii represent the coverage areas of each device” and (2) the term “coverage radius” consistently refers to the ability to directly communicate over short ranges with other members of the group, using Wi-Fi, Bluetooth, or user-to-user communication such as speech or gesture. Id. at ¶ 25 (citing Ex. 2001 at 9:12–20, 13:30–51, 17:9–37); FF 16–20. We agree with Apple’s explicit definition and credit the testimony of Dr. Klemmer over that of Dr. Goodchild. In our view, the testimony of Dr. Klemmer is more consistent with the information contained in the respective specifications of the parties. As correctly recognized by X One, Apple’s explicit definition of “coverage radius” is not limited to Bluetooth and Wi-Fi implementations. Paper 63, pp. 4–5. However, Apple’s explicit definition of “coverage radius” is sufficiently worded to encompass other example communications capabilities of mobile devices as described by Apple’s specification using: (1) the distance range of the type of network connections (e.g., Bluetooth or WiFi connections), or (2) the distance range of the type of communication channels (e.g., short-range radio, voice, visual, or gestural communications). Ex. 2001 at 13:31–40, 17:1–4; FF 11– 15. For example, if Bluetooth connection is used, “the coverage radius of each device can be the distance range within which the Bluetooth communication can be maintained between the devices. For example, two class 1 Bluetooth devices can maintain a connection within a distance of approximately 100 meters; and two class 2 Bluetooth devices can maintain a connection within a distance of approximately 10 meters. Therefore, the coverage radius of a class 1 Bluetooth device can be set to 50 meters, while the coverage radius of a class 2 Bluetooth device can be set to 5 meters, for example.” Id. at 13:49–52 (emphasis added); FF 13. Interference No. 106,000 42 If other type of communications (e.g., voice, visual, or gestural communications) is used: “the two users can specify such preference to the location information server (e.g., in the consent notification sent to the location-information server) and the coverage radius of each user can be set to a value appropriate for maintaining visual contact given the geographic conditions of the user’s current locations.” Id. at 13:53–60 (emphasis added); FF 14. In other words, the term “coverage radius” as expressly defined by Apple is worded to encompass any “user-specified distance” because the “user-specified distance” as disclosed by Apple’s ’748 patent also indicates “the range that a user of the device is able to maintain a desired level of communication with another user or device in the group” in the context of other types of communications (e.g., voice, visual, or gestural communications). Second, X One’s reference to Apple’s mobile devices using “other communications protocols, including other 802.x communication protocols (e.g., WiMax, Wi-Fi, 3G), code division multiple access (CDMA), global system for mobile communications (GSM), Enhanced Data GSM Environment (EDGE), etc” is misplaced. Contrary to X One’s arguments, mobile devices as described by Apple are capable of operating over cellular and other wireless networks (e.g., GSM network, GPRS network, EDGE network, Wi-Fi or WiMax network, and Bluetooth™ network) using different communication protocols for normal communications and tracking locations of mobile devices. FF 23–25. However, in the context of an ad hoc location-sharing group, these mobile devices locate and mutually track each other in the location-sharing group based on example embodiments of short-range communications capabilities using: (1) the distance range of the type of network connections (e.g., Bluetooth or WiFi connections), or Interference No. 106,000 43 (2) the distance range of the type of communication channels (e.g., short-range radio, voice, visual, or gestural communications). See Ex. 2001 at 13:31–40, 17:1– 4; FF 25. Third, Apple’s proffered construction does not “require[] that there is no communication . . . where there is no overlap in a Bluetooth or Wi-Fi coverage radius” as X One alleges. Paper 56 at 10:14–16. Rather, Apple’s definition only refers to a user’s ability to communicate with “another user or device in the group;” nothing in Apple’s definition precludes a device from communicating with other devices, such as the location-information server, and location information can be shared among devices through the location-information server, not directly between devices and, as such, the devices can still communicate with the server even when their coverage areas do not overlap, as shown in Apple’s Fig. 2C. Id. at 3–4 (citing Exhibit 2001, 11:34–36, 11:50–53). Therefore, when a group member strays from the group (Paper 63 at 10:16–21), and his device’s coverage area and those of the other devices in the group do not overlap, “the location-information server can provide a suggested route” back. Id. at 4 (citing Exhibit 2001, 17:65– 18:1). Similarly, Apple’s Fig. 2C does not conflict with Apple’s proffered construction, as X One argues. Paper 63 at 11–12. As explained above, although the coverage radii of devices 204c and 204b do not overlap, these devices can communicate indirectly through device 204a and/or share their locations with each other, via the location-sharing server, which is fully consistent with Apple’s definition of “coverage radius.” Paper 71 at 4:2–11; Ex. 1018 at 121:11–14; Ex. 2001 at 17:9–13 (describing a group as “integral and complete” if “each member is connect[ed] to all other members of the group either directly or via one or more other members.”) (emphasis added). Interference No. 106,000 44 Fourth, X One’s proffered construction is in conflict with the teachings of Apple ’748 patent. For example, Apple ’748 patent teaches that a “coverage radius” can be a user-specified distance, particularly in an example embodiment where other type of communications (e.g., voice, visual, or gestural communications) is used; however, such a “coverage radius” can also be determined automatically “according to the distance range of the type of network connections (e.g., Bluetooth connection or WiFi connection) that the device can maintain with another device in the location-sharing group.” Paper 71, pp. 4-5 (citing Ex. 2001 at 13:31–33). As Dr. Klemmer explains, a Wi-Fi or Bluetooth enabled device can have a user-specified coverage radius and the applicability of visual communication of Apple’s invention. Paper 73 at 11–15 (citing Ex. 2012 ¶ 3; Ex. 1018 at 59:7–14). Nevertheless, we note Apple’s explicit definition of the term “coverage radius” does not refer to or otherwise include the “maximum” as recognized by X One. Paper 63, p. 5. Nor does the term “coverage radius” require “the range that a user of the device is able to maintain a desired level of communication with another user or device in the group” to be the maximum distance between users in the location-sharing group, as Apple argues. Paper 45, p. 7. Because Apple’s explicit definition of the term “coverage radius” is consistent with the specification of Apple ’748 patent, we adopt Apple’s explicit definition of the term “coverage radius” as: “[a] coverage radius of a device is a parameter that can be used to describe the range that a user of the device is able to maintain a desired level of communication with another user or device in the group.” Ex. 2001 at 13:19–23 (emphasis added); FF 11. Interference No. 106,000 45 2. “Geofence” The term “geofence” appears in multiple limitations of X One ’093 application’s claims. Independent claims 3, 8, 12, and 13 each include a limitation requiring “defining a geofence around the location-sharing group.” (Ex. 2007 at claims 3, 8, 12, 13 (emphasis added).) Similar to the term “coverage radius,” Apple argues because Apple ’748 patent provides an explicit definition for a “geofence” of a location-sharing group: “A geofence of a location-sharing group is a boundary of an area that encloses the respective location of each participating device in the location-sharing group by at least a coverage radius of the participating device,” (1) Apple’s explicit definition of that term should control and (2) the term “boundary” should be clarified as an “active virtual boundary.” Paper 45, pp. 8–10 (citing Ex. 2001 at 13:16–19) (emphasis added). According to Apple, the term “geofence” as defined by Apple ’748 patent is also consistent with other sections of Apple’s specification describing location-sharing groups and their relationship with the coverage radii of mobile devices in the groups. Id. at 9–10. For example, Apple’s Fig. 2B shows: (1) the geofence 208a to enclose the locations of the participating devices, 204a, 204b, and 204c, by at least the coverage radius of each device, and (2) dotted circles 206a–c to represent the coverage areas of devices 204a-c respectively, with the radius of each circle “equal to the coverage radius of the device,” and the geofence is outside of the coverage area of each participating device. Id. at 8 (citing Ex. 2001 at 14:40–54); FF 16. Similarly, Apple’s Fig. 2C shows the same location-sharing group after device 204c has moved, the geofence 208b “is stretched and reshaped (e.g., from 208a to 208b) to enclose the locations of all of the participating devices by at least the Interference No. 106,000 46 coverage radius of each device.” Id. at 8 (citing Ex. 2001 at 15:23–32); FF 16 (emphasis added). Apple also argues the use of the term “geofence” in Apple’s ’748 patent refers to an active virtual boundary, i.e., a boundary that can cause something to happen when crossed, for example, an alert is generated when a location of interest crosses the “geofence” as described in the specification and recited in dependent claims 12–13. Id. at 8–9 (citing Ex. 2001 at 19:48–52; Ex. 2007 at claims 12–13). Accordingly, Apple argues the term “geofence” when read in light of Apple’s ’748 patent, should be construed to mean “an active virtual boundary of an area that encloses the respective location of each participating device in the location-sharing group by at least a coverage radius of the participating device.” Id. at 8. Relying on Dr. Goodchild’s testimony (Ex. 1017), X One responds Apple’s proffered construction is improper because such a construction: (1) is limited to Bluetooth, Wi-Fi or other short range communication implementations, and (2) the specification of Apple ’748 patent does not require a boundary to be crossed to be a “geofence.” Paper 63, pp. 12–13 (citing Ex. 1001, 13:12–16; Ex. 1017, ¶¶ 32– 36). According to X One, “[t]here is no requirement that a boundary must be crossed to be active.” Id. at 13. As such, X One argues the term “geofence” should be construed to mean “a boundary of an area that encloses the respective location of each participating device in the location-sharing group.” Id. We remain unpersuaded. First, as correctly recognized by Apple, when the specification of a patent contains a “special definition given to a claim term by the patentee,” that definition governs. Phillips, 415 F.3d at 1316, 75 U.S.P.Q. 2d at 1329. Interference No. 106,000 47 Here, Apple ’748 patent provides an explicit definition for the term “geofence”: “[a] geofence of a location-sharing group is the boundary of an area that encloses the respective location of each participating device in the location-sharing group by at least a coverage radius of the participating device.” Ex. 2001 at 13:16–19 (emphasis added); FF 17. As correctly recognized by X One, Apple’s explicit definition is not limited only to Bluetooth and Wi-Fi implementations; however, we find Apple’s explicit definition is broadly worded to encompass all other example embodiments of short-range communications capabilities of mobile devices as described by Apple’s specification using: (1) the distance range of the type of network connections (e.g., Bluetooth or WiFi connections), or (2) the distance range of the type of communication channels (e.g., short-range radio, voice, visual, or gestural communications). Ex. 2001 at 13:31–40, 17:1–4; FF 11–15. With respect to Apple’s proffered clarification of “boundary” in the context of “geofence,” such a clarification is not necessary since the boundary need not be “active” or “virtual” as Apple argues. Paper 45, pp. 8–9. For example, the boundary defined by “geofence” cannot be a “virtual” boundary if the “geofence” can be physically presented or displayed on the map, shown in Apple’s Figs. 2B– 2G. Second, X One’s proffered construction of “geofence” as simply “the boundary of an area that encloses the respective location of each participating device in the location-sharing group” is incomplete and in conflict with the teachings of Apple ’748 patent, as recognized by Apple. Paper 71, pp. 6–7. For example, Apple ’748 patent teaches that a “geofence” encloses current locations of all participating devices in the location-sharing group by at least the collective Interference No. 106,000 48 coverage radii of these devices, as shown in Apple’s Figs. 2B–2G (emphasis added). Id. at 7. X One’s proffered construction does not account for the collective coverage radii of all mobile devices in the location-sharing group (emphasis added). Because Apple’s explicit definition of the term “geofence” is consistent with the specification of Apple ’748 patent, we adopt Apple’s explicit definition of the term “geofence” as: “[a] geofence of a location-sharing group is the boundary of an area that encloses the respective location of each participating device in the location-sharing group by at least a coverage radius of the participating device.” Ex. 2001 at 13:16–19 (emphasis added); FF 17. 3. “Geographical area” vs “geofence” Like “geofence,” the term “geographical area” appears in multiple limitations of X One’s ’093 application claims. For example, independent claims 18, 23, 27, and 28 each include a limitation requiring “defining a geographical area around the location-sharing group.” Ex. 2007 at claims 18, 23, 27, 28 (emphasis added). We note X One copied each of claims 18, 23, 27, and 28 verbatim from Apple’s ’748 patent, with the exception of a single change, substituting the term “geographical area” for “geofence” in each of the original claims. (Compare, e.g., Ex. 2002 at 52-54 (claims 18, 23, 27, 28), with Ex. 2001 at claims 6, 11, 16, 17.) Therefore, because these claims are “substantially the same” as the corresponding claims of Apple’s ’748 patent, they should also be interpreted in light of the specification of Apple’s ’748 patent. See Harari v. Lee, 656 F.3d 1331, 1342, 100 U.S.P.Q. 2d 1052, 1059 (Fed. Cir. 2011) (construing claims that were Interference No. 106,000 49 “substantially copied” from a patent in light of that patent’s specification). However, the term “geographical area” does not appear anywhere in Apple’s ’748 patent. As such, Apple, relying on Dr. Scott R. Klemmer’s testimony (Ex. 2012), argues a person skilled in the art would look to Apple’s ’748 patent’s use of the term “geofence” for guidance concerning the meaning of the term “geographical area” and, based on the use of “geofence,” would recognize the functions performed by the “geographical area” in claims 18–21, 23–25, and 27–28 are the same as the functions performed by the “geofence” in Apple’s ’748 patent, and therefore should be construed to have the same meaning as “geofence.” Paper 45, pp. 10–11 (citing Ex. 2012 ¶¶ 38–39). X One does not refute Apple’s proffered construction. Paper 63, pp. 13–14. Instead, X One only argues “there is no requirement that a boundary must be crossed to be active” and that should also apply to the term “geographical area.” Id. at 13 (citing 1017 ¶¶ 37–38). In the absence of an explicit or special definition for the term “geographical area” from the parties’ disclosures, the “ordinary and customary meaning” of that term governs. See Phillips, 415 F.3d at 1312. The ordinary and customary meaning of the term “geographical area” can be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id., at 1314. Typically, it is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the “ordinary” and the “customary” meaning of the terms in the claims. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). Interference No. 106,000 50 The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Phillips, 415 F.3d at 1321 (citations omitted). In other words, Apple’s ’748 patent’s specification is the best guide to the meaning of claim terms. As recited in all Apple’s claims and described in Apple’s ’748 patent’s specification, the term “geographical area” is defined “around a location-sharing group [formed between two or more mobile devices].” Ex. 1001, claims 1–18. In that context, we agree with Apple’s proffered construction. However, as we adopt the term “geofence” to mean “a boundary of an area that encloses the respective location of each participating device in the location-sharing group by at least a coverage radius of the participating device” as defined in Apple’s specification without specific reference to whether that boundary is “an active virtual boundary,” we also adopt the term “geographical area” to have the same meaning as “geofence.” Lack of Written Description Support Having determined the meaning of Apple’s disputed claim terms, we now turn to whether X One’s ’093 application provides written description support for disputed limitations of Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 of X One’s ’093 application as follows. Interference No. 106,000 51 (1) First Limitation: “determining a respective coverage radius for each of the two or more mobile devices” as recited in independent claims 3, 8, 18, and 25 of X One’s ’093 application. Apple argues X One’s ’093 application lacks sufficient written description support for the limitation “determining a respective coverage radius for each of the two or more mobile devices” of claims 3–6, 8–10, and 18–25. Paper 45, pp. 12– 14. According to Apple, X One’s ’093 specification never uses the term “coverage radius.” Id. at 12 (citing Ex. 2012 ¶ 47). In addition, X One’s ’093 specification does not concern location-sharing groups comprising mobile devices for which a coverage radius could be determined. Instead, X One’s ’093 application teaches all communications between the mobile devices of a location sharing group occur through a cellular network, a type of network where the ability to maintain a desired level of communication does not depend on the distance between the mobile devices. Id. at 12 (citing Ex. 2002 ¶¶ 8–13 & Fig. 2A; Ex. 2012 ¶ 47). As a result, mobile devices of X One’s ’093 application do not have a “coverage radius” and do not need to determine any type of communication range for a mobile device of a location-sharing group. Id. at 12–13 (citing Ex. 2012 ¶ 47.) Relying on Dr. Goodchild’s testimony (Ex. 1017 ¶¶ 39–49), X One responds that: (1) X One’s ’093 application teaches location-sharing between mobile devices in a group and mobile devices each have a coverage radius and (2) because the “coverage radius” of Apple’s ’748 patent can be a user-specified distance without any cap or limit, including any distance defined by a user that allows for the ability to share location information with other users in a location-sharing group, X One’s ’093 application provides clear support for a user inputting a radius that is the coverage radius for that mobile device. Paper 63, pp. 14–15 (citing Ex. 1016 ¶¶ 79, 86, 140–141, and Fig. 28B; Ex. 1017 ¶¶ 40–42, 45). According to X One, Interference No. 106,000 52 “Figure 28B of the X One application also shows an ‘Autorange’ feature which can be applied to the boundary of a location-sharing group. The term ‘Autorange’ informs a person skilled in the art that a boundary can be automatically defined to best fit the members of the group.” Id. at 15 (citing Ex. 1017 ¶ 42). X One’s Fig. 28B shows a user interface screen to create settings including a user-defined radius or autorange feature for each device or group of devices, as reproduced in relevant part below: Based on Fig. 28B, X One argues “if a user choose a ‘center’ for the Mapit feature, that the ‘center’ can be a ‘user’” and, as such, “a user can specify a radius around a mobile device.” Id. at 16. We do not find X One’s arguments persuasive. We have also considered Dr. Goodchild’s testimony which appears at ¶¶ 39–49 of his declaration (Ex. 1017). However, we do not accord Dr. Goodchild’s testimony on these points any significant weight. We are not required to credit the unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also, Standing Order, Paper 2, ¶158.1.1. At the outset, we acknowledge: (1) X One’s ’093 application also discloses location-sharing among mobile devices in a location-sharing group, and (2) the Mapit feature of X One’s ’093 application, as shown in Fig. 28, allows a user to choose a “center” and that “center” can be interpreted to encompass a “user” (i.e., mobile device). We also acknowledge X One’s ’093 application describes “a user can specify a radius,” but the user-defined radius as disclosed by X One’s ’093 Interference No. 106,000 53 application does not represent a coverage or communication range of any particular mobile device. Instead, X One’s ’093 application describes all communications between mobile devices with the location-sharing group as taking place over the cellular networks. Ex. 2001 at ¶¶ 11–12, 95, 124–125. As such, the Mapit feature of X One’s “Buddy Tracker TM ” software does not extend to the coverage radii of other mobile devices and their associated communication capabilities in a location- sharing group. Nor does X One’s “Buddy Tracker TM ” software determine “a respective coverage radius for each of the two or more mobile devices” as recited in independent claims 3, 8, 18, and 25 of X One’s ’093 application, particularly, when the term “coverage radius of a device” is construed to mean “a parameter that can be used to describe the range that a user of the device is able to maintain a desired level of communication with another user or device in the group.” Ex. 2001 at 13:19–23. For example, if “a user can specify a radius around a mobile device,” as shown in X One’s Fig. 28B, that does not mean the Mapit feature of X One’s “Buddy Tracker TM ” software is equipped to determine a “coverage radius” of the two or more mobile devices in the same location-sharing group. Because all communications between mobile devices with the location-sharing group take place over the cellular networks as described by X One’s ’093 application, there is no reason for individual mobile device to determine the “respective coverage radius for each of the two or more mobile devices” in the same location-sharing group. Instead, the coverage of each mobile device is the same coverage provided by the cellular networks. Taken for example, if Harry, who is located in San Francisco, requests location-sharing with Sally, who is located in New York, there is no reason for Harry’s mobile device to determine a respective coverage radius for his mobile Interference No. 106,000 54 device in San Francisco as well as Sally’s mobile device in New York. Instead, according to X One’s ’093 application, a location of Sally’s mobile device is found by the location-information server, shown in X One’s Fig. 2A, and sent to Harry’s mobile device over cellular networks to be presented on a user interface screen of Harry’s mobile device to show: (1) last update, (2) distance from the user, and (3) last known direction, latitude, longitude, and speed, as shown in X One’s Fig. 4. See Ex. 2002 ¶¶ 6, 64, 66, 76, 91–100; FF. 26–30. As correctly recognized by Apple, X One’s Fig. 28B simply specifies the distance from a particular location or a center point (XXX) that will be shown on the map displayed on a mobile device’s screen, and not the communication range of a device. Paper 71, pp. 5–6 (citing Ex. 2002 ¶ 62, which describes a map display having a radius that was input in the interface shown in Fig. 28B); Ex. 2012 ¶ 50; see also Ex. 2017 ¶¶ 19, 22). In other words, the radius as shown in X One’s Fig. 28B represents a defined distance from a fixed geographic point for purposes of scaling the map display to show locations of mobile devices in a location-sharing group, and not any coverage radius or communication range of any particular mobile device. In this context, we find X One’s ’093 application lacks adequate written description for “determining a respective coverage radius for each of the two or more mobile devices” as recited in independent claims 3, 8, 18, and 25 of X One’s ’093 application. We also find the written description in X One’s ’093 application does not reasonably convey to one of ordinary skill in the art that X One had possession of that limitation. (2) Second Limitation: “defining a geofence around a location-sharing group” as recited in certain independent claims 1, 8, 12, and 16 of X One’s ’093 application. Interference No. 106,000 55 Apple argues X One’s ’093 application lacks sufficient written description support for the limitation “defining a geofence around a location-sharing group” as recited in certain independent claims 1, 8, 12, and 16 of X One’s ’093 application. Paper 45, pp. 14–16. In particular, Apple argues: (1) the term “geofence” does not appear in X One’s ’093 application; (2) X One’s ’093 application teaches location-sharing groups in which mobile devices communicate over a cellular network and mobile device communicating in this manner do not need to have a “coverage radius” based on its communication capabilities and, as such, need not be enclosed “by at least a coverage radius of the participating device” as required by the definition of “geofence”; and (3) neither the reference to “translucent outline” nor “radar inclusion mode” nor “map room” as disclosed by X One’s ’093 application relates to any “geofence” of the location sharing group or any boundary of the relevant area defined based on the coverage radii of the groups. Id. at 14–15 (citing Ex. 2002 ¶¶ 59, 77, 116–117) (emphasis added). Relying on Dr. Goodchild’s testimony (Ex. 1017 ¶¶ 50–54), X One responds the ’093 application describes: (1) displaying a user’s location on a Mapit display of a translucent boundary, and that a translucent shaped outline encompassing all the points representing the locations of Buddies (i.e., members of the group) on the Mapit display that outlines the members of a location-sharing group; and (2) picking a maplet with a coverage area based on the position of the Buddies and even excluding Buddies who “are out of the coverage area.” Paper 63, pp. 17–19 (citing 1016 ¶¶ 16, 50, 63, 77, 116–117, 140). According to X One, the translucent boundary is a visible boundary on a map display, and the map including the members can change size and shape based on the current location of the members Interference No. 106,000 56 and whether those members are active or inactive in the group. Id. at 18 (citing Ex. 1017 ¶¶ 53–54). We disagree with X One. As previously discussed, we construe the term “geofence” to mean “a boundary of an area that encloses the respective location of each participating device in the location-sharing group by at least a coverage radius of the participating device.” The disputed limitation requires that “geofence” be defined “around a location-sharing group [including mobile devices]” by the collective coverage radii of all participating devices in the location-sharing group. As correctly recognized by Apple, neither the radar inclusion zone nor the translucent outline as disclosed by X One’s ’930 application can be interpreted to encompass a “geofence.” Paper 71, pp. 7–8. For example, the radar inclusion zone is an area defined around a fixed location, and not around mobile devices in a location-sharing group, or around their coverage radii of these mobile devices. Id. at 8 (emphasis added). Likewise, the translucent outline is used to connect the locations of the devices, and does not or cannot enclose the mobile devices in a location-sharing group by at least their collective coverage radii of these mobile devices. Id. (citing Ex. 2002 ¶ 77; Ex. 2012 ¶ 55). Taken for example the location-sharing between Harry, who is located in San Francisco, and Sally, who is located in New York, there is no reason for Harry’s mobile device to define a “geofence around the location-sharing group” including Harry’s mobile device in San Francisco and Sally’s mobile device in New York. Nor is it practical to form a “geofence” around an area that covers both San Francisco and New York. Instead, X One’s ’093 application discloses a user interface screen at Harry’s mobile device to show: (1) last update, (2) distance from the user, and (3) last known direction, latitude, longitude, and speed of Interference No. 106,000 57 Sally’s mobile device, as shown, for example, in X One’s Fig. 4. See Ex. 2002 ¶¶ 6, 64, 66, 76, 91–100; FF. 26–30. Accordingly, we find X One’s ’093 application lacks adequate written description for “defining a geofence around a location-sharing group” as recited in independent claims 1, 8, 12, and 16 of X One’s ’093 application. We also find the written description in X One’s ’093 application does not reasonably convey to one of ordinary skill in the art that X One had possession of that limitation. (3) Third Limitation: “detecting that a point of interest has crossed and entered the geofence of the location-sharing group” and “providing a notification to at least one of the two or more devices about the point of interest” as recited in independent claims 12 and 13 of X One’s ’093 application. X One’s independent claims 12 and 13 include additional “geofence” limitations that require “detecting that a point of interest has crossed and entered the geofence of the location-sharing group” and “providing a notification to at least one of the two or more devices about the point of interest.” Ex. 2007 at claims 12, 13 (emphasis added). Because X One’s ’093 application lacks sufficient written description support for “geofence” and “defining a geofence around a location-sharing group,” we also find X One’s ’093 application lacks adequate written description for “detecting that a point of interest has crossed and entered the geofence of the location-sharing group” and “providing a notification to at least one of the two or more devices about the point of interest” as recited in independent claims 12 and 13 of X One’s ’093 application. We also find the written description in X One’s ’093 application does not reasonably convey to one of ordinary skill in the art that X One had possession of that limitation. Interference No. 106,000 58 (4) Fourth Limitation: “defining a geographical area around a location-sharing group” as recited in independent claims 18, 23, 27, and 28 of X One’s involved application. The limitation “defining a geographical area around a location-sharing group” of independent claims 18, 23, 27, and 28 of X One’s ’093 application is the same as the defining a geofence limitation of claims 3, 8, 12, and 13, except that “geographical area” has been substituted for “geofence.” Ex. 2012 ¶ 69. Apple argues (1) the term “geographical area” should be interpreted identically to “geofence” and, based on that interpretation, (2) X One’s ’093 application lacks adequate written description support for the “defining a geographical area around a location-sharing group” limitation, for the same reasons as discussed in connection with defining a geofence limitation. Paper 45, p. 18 (citing Ex. 2012 ¶¶ 69-70). X One agrees with Apple that the term “geographical area” should be interpreted the same as “geofence.” Paper 63, p. 21. As we construe the term “geographical area” the same as “geofence” and find X One’s ’093 application lacks sufficient written description support for “geofence” and “defining a geofence around a location-sharing group,” as discussed above, we also find X One’s ’093 application lacks adequate written description for “defining a geographical area around a location-sharing group” of independent claims 18, 23, 27, and 28 of X One’s ’093 application. Likewise, we also find the written description in X One’s ’093 application does not reasonably convey to one of ordinary skill in the art that X One had possession of that limitation. Interference No. 106,000 59 (5) Fifth Limitation: “detecting formation of a location-sharing group between two or more mobile devices” as recited in each of the independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application. Apple argues X One’s ’093 application lacks sufficient written description support for the limitation “detecting formation of a location-sharing group between two or more mobile devices” as recited in each of the independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application. Paper 45, pp. 17–20. In particular, Apple argues the “instant buddy” setup processes of X One’s ’093 application do not adequately support the full scope of the limitation “detecting formation of a location-sharing group between two or more mobile devices” because the group formed only includes the two buddy devices and does not include more than two members. Paper 45, pp. 18–20 (citing Ex. 2002 ¶¶ 12, 77; Ex. 2012 ¶ 73). X One responds the ’093 application describes: (1) Figs. 17A–17B support the formation of a location-sharing group for two or more mobile devices; (2) Fig. 2A shows five mobile devices representing a location-sharing group in the Buddy Watch system; (3) Fig. 2F shows a user interface screen of five active users whose location is being tracked; and (4) Figs. 3–4 show multiple individuals and groups, all of which show full support of the limitation “detecting formation of a location- sharing group between two or more mobile devices” as recited in each of the independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application. Paper 63, pp. 19–22 (citing Ex. 1016 ¶¶ 38, 86, 87, 100, Figs. 22 and 40; Ex. 1018 at 68:11–16; Ex. 1017 ¶ 60). At the outset, we note both Apple and X One disclose methods and systems for forming and tracking a location-sharing group in which two or more mobile Interference No. 106,000 60 devices can share and mutually track each other’s locations in the location-sharing group. Ex. 1001, Ex. 2001 at Abstract; Ex. 1016, Ex. 2002 ¶ 10 (emphasis added). The central difference between Apple’s ’748 patent and X One’s ’093 application is that X One’s ’093 application forms a location-sharing group of two or more mobile devices using cellular networks, whereas Apple’s ’748 patent forms an ad hoc location-sharing group of two or more mobile devices based on short-range communications capabilities of these mobile devices using: (1) the distance range of the type of network connections (e.g., Bluetooth or WiFi connections), or (2) the distance range of the type of communication channels (e.g., short-range radio, voice, visual, or gestural communications) and the creation of a “geofence” around the location-sharing group based on a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radii for the mobile devices. See Ex. 2001 at 13:31–40, 17:1–4; FF 11–15. Because the disputed limitation is broadly worded, we agree with X One that the ’093 application provides full written description support for the limitation “detecting formation of a location-sharing group between two or more mobile devices” as recited in each of the independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application. Nevertheless, X One’s full written description support for this disputed limitation does not negate our findings that X One’s ’093 application lacks written description for disputed limitations recited in each of independent claims 3, 8, 12, 13, 18, 23, 27, and 28 of X One’s ’093 application, as discussed above. For the foregoing reasons, we conclude that Apple has satisfied its burden of establishing that X One’s ’093 application does not describe those disputed limitations within the meaning of Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and Interference No. 106,000 61 28 of X One’s ’093 application. Therefore, Apple Substantive Motion 1 (Paper 45) is granted. V. X ONE RESPONSIVE MOTION TO ADD NEW CLAIMS (PAPER 51) Responsive to Apple Substantive Motion 1 (Paper 45) for lack of written description support, X One Miscellaneous Motion (Paper 67) seeks to add two new claims that correspond to Count 1 and which are alleged no broader than the claims already allowed. Paper 51, pp. 1–20. In particular, X One seeks to add New Claim A which further (1) defines the term “coverage radius” consistent with dependent claim 8 of Apple’s ’748 patent and (2) replace the term “geofence” with “outline” allegedly conform to the literal language of X One’s ’093 application. Id. at 3–12. New Claim A is reproduced below with mark-ups relative to Count 1. A computer-implemented method performed by one or more data processing apparatus, the method comprising: detecting formation of a location-sharing group between two or more mobile devices; defining a geofence an outline around the location-sharing group, the geofence outline encloses respective current geographic locations of the two or more mobile devices; tracking a geographic location of the location-sharing group and a geographic coverage of the geofence outline around the location-sharing group; and providing the geographic location of the location-sharing group to at least one of the two or more mobile devices in the location- sharing group, wherein defining a geofence an outline around the location-sharing group further comprises: determining the respective current geographic locations of the two or more mobile devices; determining a respective coverage radius for each of the two or more mobile devices wherein the respective coverage radius is a user-specified distance; Interference No. 106,000 62 determining a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radius for the mobile device; and using the boundary of the combined coverage area as the geofence outline around the location-sharing group. Id. at 2–3 (emphasis added). In addition, X One also seeks to add New Claim B which replaces (1) the term “coverage radius” with “coverage area”, and (2) the term “geofence” with “geographical area.” Id. at 12–20. New Claim B is reproduced below with mark- ups relative to Count 1. A computer-implemented method performed by one or more data processing apparatus, the method comprising: detecting formation of a location-sharing group between two or more mobile devices; defining a geofence geographical area around the location-sharing group, the geofence geographical area encloses respective current geographic locations of the two or more mobile devices; tracking a geographic location of the location-sharing group and a geographic coverage of the geofence geographical area around the location- sharing group; and providing the geographic location of the location-sharing group to at least one of the two or more mobile devices in the location- sharing group, wherein defining a geofence geographical area around the location- sharing group further comprises: determining the respective current geographic locations of the two or more mobile devices; determining a respective coverage radius area for each of the two or more mobile devices; determining a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radius area for the mobile device; and Interference No. 106,000 63 using the boundary of the combined coverage area as the geofence geographical area around the location-sharing group. Id. at 13–14 (emphasis added). According to X One, New Claim A and New Claim B: (1) are supported by X One’s ’093 application, (2) overcome any potential issues raised by Apple under the written description requirement, (3) interfere in fact with Apple’s claims, and (4) correspond to Count 1. Id. at 4–20 (citing X One’s ’093 application, Ex. 1016 ¶¶ 12, 14, 15, 50, 63, 76–77, 90–91, 106, 115–117, 120, 129, 140–141, 149, Fig. 28B and Fig. 30). X One further certifies that it is not aware of any reason why New Claim A and New Claim B are not patentable and that these claims are not broader in scope than the allowed claims of X One’s ’093 application. Id. at 8–9, 17–19. X One bears the burden of proof. See 37 C.F.R. § 41.120(b). New Claim A Proposed Claim A replaces the term “geofence” with the term “outline.” Proposed Claim A also adds the requirement that the “coverage radius” is a “user- specified distance.” Paper 51, p. 4 (emphasis added). Despite these changes, proposed Claim A requires that defining an “outline” requires determining a “coverage radius” for each of two or more mobile devices. As discussed above, a “coverage radius” must be able to maintain a desired level of communication with another user or device in a group. As discussed above further, we find X One’s ’093 application lacks adequate written description for “determining a respective coverage radius for each of the two or more mobile devices” because X One’s application describes all communications between devices as taking place over cellular networks, not directly between the devices. Interference No. 106,000 64 X One argues that its “buddy” system and its Mapit feature provide support for this claim element. Neither Fig. 28B of X One’s ’093 application (showing the interface screen of the Mapit feature) nor the radius of the user defined “map rooms” feature shown in Fig. 30 indicates or refers to any communication range for any particular mobile device. Id. at 8–9 (citing Ex. 1016 ¶¶ 48, 50, 62, Fig. 28B and Fig. 30). Because the mobile devices of the location-sharing groups of the ’093 application communicate solely over a cellular network, rather than via short- range communication, as disclosed by Apple’s ’748 patent, their ability to maintain communication does not depend on the distance between the mobile devices or their respective coverage radii. As such, the additional “wherein” clause does not negate our finding that X One’s ’093 application lacks written description for “determining a respective coverage radius for each of the two or more mobile devices” as discussed above. Second, new Claim A also recites: “determining a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radius for the mobile device; and using the boundary of the combined coverage area as the outline around the location-sharing group.” Paper 51, p. 4 (emphasis added). As correctly recognized by Apple, these limitations specify the relationship among the coverage radii of the mobile devices, the combined coverage area defined by the coverage radii, and the outline of new Claim A. Paper 60, pp. 9–10. As recited in new Claim A, the term “outline” must still be: (1) boundary of the combined coverage area and must also (2) “enclose[] the current geographic location of each mobile device by a distance equal to the coverage radius for the mobile device.” Id. at 10 (emphasis added). As support for these limitations, X One cites: (1) paragraph 77 of X One’s ’093 application which describes using a “translucent shaped outline” around the Interference No. 106,000 65 buddies’ positions on the Mapit display, and (2) paragraphs 62, 90, 120, and 140– 141 of X One’s ’093 application which describe generally picking a maplet based on the position of the buddies and even excluding buddies who “are out of the coverage area.” Paper 51, pp. 6–7 (citing Ex. 1016 ¶¶ 62, 77, 90, 120, 140–141 and Appendix 6). We acknowledge paragraph 77 of X One’s ’093 application teaches a “translucent shaped outline” and provides support for the term “outline” in isolation. However, nothing in these cited paragraphs or elsewhere in X One’s ’093 application indicates that the translucent shaped “outline” as disclosed by X One’s ’093 application is only used to connect the members of a location-sharing group on the Mapit display, and does not constitute an “outline” recited in proposed Claim A that represents a boundary of a combined coverage area and encloses the current geographical location of the mobile devices by a distance equal to their coverage radii for these mobile devices, as required by the “determining a boundary” and “using a boundary” limitations. Paper 60, pp. 10– 11; FF 26–33. As such, we find X One’s ’093 application lacks adequate written description for “determining a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage radius for the mobile device; and using the boundary of the combined coverage area as the outline around the location-sharing group” as recited in new Claim A. Accordingly, we are not persuaded that proposed Claim A satisfies the written description requirement. New Claim B New Claim B replaces the claim term “geofence” in X One’s current claims with the term “geographical area” and also replaces the term “coverage radius” with the term “coverage area.” Paper 51, p. 13. Interference No. 106,000 66 As discussed above, currently pending X One claims 18, 23, 27, and 28 recite the term “geographical area” instead of the term “geofence.” As also discussed above, we find that “geographical area” has the same meaning as “geofence.” For the reasons we provided above regarding the term “geofence,” we are not persuaded that the term “geographical area” in X One’s proposed Claim B is supported by its specification. In regard to the term “coverage area” as a substitute for the term “coverage radius” in X One’s proposed Claim B, Apple argues that “coverage area” should be interpreted to mean “the area defined by the coverage radius.” Paper 63, pp. 4–12. X One responds that Apple’s proposed construction is improperly narrow and should, instead, be construed similarly to “coverage radius” to mean “an area over which a user of the device is able to maintain a desired level of communication with another use or device in the group,” where the desired level of communication refers to sharing location data with others in the group. Paper 70, p. 3. We agree and adopt X One’s proposed construction. Regardless however, the limitations of New Claim B also specify the required relationship among the “coverage area” of the mobile devices, the combined coverage area defined by the coverage areas, and the geographical area surrounding the group. Paper 60, p. 18 (citing Ex. 2017 ¶ 76). As such, the “geographical area” as recited in new Claim B must still be: (1) the boundary of the combined “coverage area,” and also must (2) “enclose[] the current geographic location of each mobile device by a distance equal to the coverage area for the mobile device.” As support for these limitations, X One cites the same paragraph 77 of X One’s ’093 application which describes using a “translucent shaped outline” around the buddies’ positions on the Mapit display, and paragraphs 62, 90, 120, and 140–141 of X One’s ’093 application which describe generally picking a Interference No. 106,000 67 maplet based on the position of the buddies and even excluding buddies who “are out of the coverage area.” Paper 51, pp. 14–17 (citing Ex. 1016 ¶¶ 62, 77, 90, 120, 140–141 and Appendix 10). However, as previously discussed, the translucent shaped “outline” as disclosed by X One’s ’093 application is only used to connect the members of a location-sharing group on the Mapit display, and does not constitute a “geographical area” that represents a boundary of a combined coverage area and encloses the current geographical location of each of mobile devices by a distance equal to its coverage area, as required by the “determining a boundary” and “using a boundary” limitations of proposed Claim B. Paper 60, pp. 18–20; FF 26–33. As such, we find X One’s ’093 application lacks adequate written description for “determining a boundary of a combined coverage area that encloses the current geographic location of each mobile device by a distance equal to the coverage area for the mobile device; and using the boundary of the combined coverage area as the geographical area around the location-sharing group” as recited in new Claim B. Because X One has failed to meet its burden of proof regarding at least these limitations of New Claim A and New Claim B, we need not address: (1) whether other limitations of New Claim A and New Claim B are supported by X One’s ’093 application, and (2) whether New Claim A and New Claim B are broader in scope than the allowed claims of X One’s ’093 application. Accordingly, X One Responsive Motion 2 (Paper 51) is denied. Interference No. 106,000 68 VI. CONCLUSION Based on the record before us, we conclude X One has not met its burden to show by the preponderance of evidence that Dr. Scott R. Klemmer is not competent to offer opinion testimony in this interference proceeding and, as such, Dr. Klemmer’s testimony (Ex. 2012, Ex. 2013, and Ex. 2017) in its entirety should be inadmissible under Federal Rules of Evidence (“FRE”) 702. As such, X One’s Motion to Exclude (Paper 67) is denied. We, however, conclude Apple has met its burden to show by the preponderance of evidence that X One’s claims, i.e., Claims 3–6, 8–10, 12, 13, 18– 21, 23–25, 27, and 28 of X One’s ’093 application are unpatentable under 35 U.S.C. § 112, first paragraph, for lacking written description support. As such, Apple Substantive Motion 1 (Paper 45) is granted. Because Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 of X One’s ’093 application are unpatentable under 35 U.S.C. § 112, first paragraph, for lacking written description support, X One’s proposed Claims A and B, do not overcome these written description problems. As such, X One Responsive Motion 2 (Paper 51) to add two new claims is denied. Because Apple Substantive Motion 1 (Paper 45) is granted, and X One Responsive Motion 2 (Paper 51) is denied, the interference is terminated because X One lacks standing to prosecute the interference. 37 C.F.R. § 41.201. Consequently, it is not appropriate to reach X One Substantive Motion 1 (Paper 26) for judgment that Apple’s claims are unpatentable over prior art. Accordingly, X One Substantive Motion 1 (Paper 26) is dismissed as moot. As a result of the above decisions, judgment will be entered against X One. Interference No. 106,000 69 VII. ORDER For the reasons discussed above, it is: ORDERED that X One’s Motion to Exclude (Paper 67) is denied; FURTHER ORDERED that Apple Substantive Motion 1 (Paper 45) alleging lack of written description support under 35 U.S.C. § 112, first paragraph, is granted; FURTHER ORDERED that X One Responsive Motion 2 (Paper 51) is denied; FURTHER ORDERED that X One Substantive Motion 1 (Paper 26) is dismissed as moot; FURTHER ORDERED that Claims 3–6, 8–10, 12, 13, 18–21, 23–25, 27, and 28 (corresponding to Count 1) of X One’s involved application, U.S. Patent Application No. 13/754,093 will be FINALLY REFUSED in a separate paper, 35 U.S.C. 135(a); and FURTHER ORDERED that a party seeking judicial review timely serve notice on the Director of the United States Patent and Trademark Office. 37 C.F.R. §§ 90.1 and 104.2. Judgment under 37 CFR § 41.127(a) shall follow by a separate order. Interference No. 106,000 70 cc (via email delivery): Attorney for Junior Party – Apple, Inc.: Mathew I. Kreeger, Esq. Mehran Arjomand, Esq. Morrison & Foerster LLP 425 Market Street San Francisco, CA 94105-2482 Email: mkreeger@mofo.com Email: marjomand@mofo.com Attorney for Senior Party – X One Inc.: Robert M. Schulman, Esq. Michael A. O’Shea, Esq. Leonard C. Suchyta, Esq. Yisun Song, Esq. Hunton & Williams LLP 2200 Pennsylvania Avenue Washington DC 20037 Email: rschulman@hunton.com Copy with citationCopy as parenthetical citation