eBay Inc.v.Locata LBS LLC

Patent Trial and Appeal Board

Oct 2, 2015

09068047 (P.T.A.B. Oct. 2, 2015)

Trials@uspto.gov Paper 31
571-272-7822 Entered: October 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

eBAY INC.,
Petitioner,

v.

LOCATA LBS LLC,
Patent Owner.
____________

Case IPR2014-00585
Patent 6,259,381 B1
____________

Before MITCHELL G. WEATHERLY, MIRIAM L. QUINN, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
eBay Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an
inter partes review of claims 1–12 of U.S. Patent No. 6,259,381 B1
(Ex. 1001, “the ’381 patent”). On October 9, 2014, we instituted an inter
partes review of claims 1–12 based on our determination that the
information presented in the Petition demonstrated that there was a
reasonable likelihood that Petitioner would prevail in challenging claims 1–
12 as unpatentable under 35 U.S.C. § 103 as obvious over the combination
of Fast
1
and Buss.
2
Paper 7 (“Dec. on Inst.”).
Locata LBS LLC (“Patent Owner”) filed a Patent Owner Response
(Paper 16, “PO Resp.”). Petitioner filed a Reply (Paper 22, “Reply”).
An oral hearing was held on June 23, 2015. A transcript of the
hearing is included in the record. Paper 29.
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–12 of the ’381 patent are
unpatentable.
A. The ’381 Patent
The ’381 patent, titled “Method of Triggering an Event,” is directed to
a method for triggering an event in a roving apparatus when the position of
the roving apparatus is within a predetermined area, and at least one
specified triggering criterion is met. Ex. 1001, Abstract. According to
the ’381 patent, “the term ‘roving’ is used to indicate that the apparatus may

1
Fast, U.S. Patent No. 5,497,149, issued March 5, 1996 (Ex. 1004).
2
Buss et al., U.S. Patent No. 5,539,395, issued July 23, 1996 (Ex. 1008).
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wander about without necessarily having a definite origin, route, or
destination.” Id. at 1:6–8.
The ’381 patent describes a method that includes associating events
with a locality, specifying triggering prerequisites for each event, and
“triggering an event if (a) the roving apparatus is within a predetermined
proximity of the locality, and (b) the at least one triggering prerequisite
specified for the event is met.” Id. at 1:45–52. Examples of triggering
prerequisites include “direction of travel of the roving apparatus, position of
the roving apparatus relative to the locality, increase in distance from the
locality, time, day, date, temperature, password, or any other criteria.” Id. at
1:53–57.
Claims 1 and 7 of the ’381 patent are independent. Claims 2–6
depend from claim 1, which is reproduced below:
1. A method of triggering an event in a roving apparatus,
said method comprising the steps of:
a) defining a plurality of predetermined areas;
b) associating one or more events with each of said
predetermined areas;
c) specifying at least one triggering criteria for each of
said one or more events;
d) calculating the position of (the) said roving apparatus;
e) (evaluating) performing an evaluation of the status
and position of (the) said roving apparatus in
comparison to said at least one triggering criteria and
the position of said predetermined areas; and
i. if (the) said evaluation determines that the
roving apparatus is outside all predetermined
areas, the roving apparatus maintains (said
calculating) performing the evaluation of the
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status and position of the roving apparatus,
without triggering an event;
ii. if (the) said evaluation determines the roving
apparatus is within one of (the) said
predetermined areas, and said (the) at least one
(said) triggering criteria specified for (an) a
particular event is met, (the) said particular
event is triggered;
iii. if (the) said evaluation determines the roving
apparatus is within (the) an overlapping portion
of any overlapping predetermined areas, and
(the) said at least one (said) triggering criteria
specified for an event is met, events from any
of the overlapping predetermined areas may be
triggered in accordance with any one of said at
least one triggering criteria for said overlapping
predetermined areas;
such that there is no requirement to specify triggering
criteria for every area which the roving apparatus may
traverse.
Ex. 1001, 4:61–5:25.
Claims 8–12 depend from claim 7, which is reproduced below:
7. A method of triggering an event in a roving
apparatus, the method comprising:
a) defining a plurality of predetermined areas, where
i. the predetermined areas are irregularly distributed
according to predetermined points-of-interest; and
ii. some predetermined areas may overlap;
b) associating one or more events with each
predetermined area;
c) specifying at least one triggering criteria for each
event;
d) calculating the position of the roving apparatus; and
e) triggering an event if:
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i. the calculated position of the roving apparatus falls
within a predetermined area; and
ii. the at least one triggering criteria specified for the
event is met such that if the calculated position of
the roving apparatus is at a position where the
predetermined areas overlap, events from any of
the overlapping predetermined areas may be
triggered in accordance with any one of said
triggering criteria of those areas.
Id. at 5:47–67.
II. ANALYSIS
A. Claim Interpretation
We interpret claims of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[the claims] appear[].” 37 C.F.R. § 42.100(b). The Board, however, may
not “construe claims during IPR so broadly that its constructions are
unreasonable under general claim construction principles. . . . ‘[T]he
protocol of giving claims their broadest reasonable interpretation . . . does
not include giving claims a legally incorrect interpretation.’” Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fec. Cir. 2015) (citation
omitted). “Rather, ‘claims should always be read in light of the specification
and teaching in the underlying patent’” and “[e]ven under the broadest
reasonable interpretation, the Board’s construction ‘cannot be divorced from
the specification and the record evidence.’” Id. (citations omitted).
In the Decision on Institution, we interpreted the following claim
terms:
Term Interpretation
“bearing” “measurement of direction
between two points”
“heading” “direction of travel”
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Dec. on Inst. 5–7. The parties do not dispute these interpretations, and we
see no reason to modify them in light of the record developed at trial.
B. Level of Ordinary Skill in the Art
Petitioner proposes a particular level of ordinary skill in the art, and
Patent Owner disagrees and offers its own definition. Ex. 1009 ¶ 28;
Ex. 2003 ¶¶ 17–18. In light of the evidence before us, we find that the
references themselves represent the level of ordinary skill in the art, and that
we need not explicate it further. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (the level of ordinary skill in the art usually is
evidenced by the references themselves); In re GPAC Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and
Interferences did not err in concluding that the level of ordinary skill in the
art was best determined by the references of record).
C. Obviousness of Claims 1–12 over Fast and Buss
Petitioner asserts that claims 1–12 are unpatentable under 35 U.S.C.
§ 103 over the combination of Fast and Buss. Pet. 15–28; Reply 3–14.
Petitioner explains how a combination of Fast and Buss allegedly discloses
or suggests the claimed subject matter and also relies on the Declaration of
Paul F. Reynolds, Jr., Ph.D. (Ex. 1009, “Reynolds Declaration”). Patent
Owner disagrees with Petitioner’s assertions and relies on the Declaration of
Michael C. Brogioli, Ph.D. (Ex. 2003, “Brogioli Declaration”). PO Resp.
33–56.
To prevail on its patentability challenge, Petitioner must establish
facts supporting its challenge by a preponderance of the evidence. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
§ 103 if the differences between the subject matter sought to be patented and
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the prior art are such that the subject matter as a whole would have been
obvious to a person having ordinary skill in the art to which the subject
matter pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).
Prior art references must be “considered together with the knowledge of one
of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). A party that petitions the Board for a determination of
obviousness must show that “a skilled artisan would have been motivated to
combine the teachings of the prior art references to achieve the claimed
invention, and that the skilled artisan would have had a reasonable
expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms.
USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (citing Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)).
1. Overview of Fast
Fast is directed to systems for determining the location of a person or
object at predetermined times and in defined situations, within
predetermined allowed and disallowed areas. Ex. 1004, 1:8–11. The Fast
system comprises a security beacon containing a GPS receiver, a cellular
telephone, and a programming/monitoring terminal. Id. at 2:47–54. The
programming/monitoring terminal is used to create zones on local maps,
which can be defined as allowed or disallowed areas. Id. at 3:35–41. Zones
can include time limitations that define when a person may be in each zone.
Id. at 4:11–12. Zones are generally “set-up for the regular daily living
environment of the wearer” and will “differ from person to person and differ
in their application of protecting, observing and restricting a person.” Id. at
4:33–36. The programmed zones are downloaded to the security beacon,
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and the security beacon can issue warnings if the person wearing it leaves an
allowed zone or enters a disallowed zone. Id. at 3:41–42, 62–66.
According to Fast, the described system can be used, for example, in
the “[e]nforcement of restraining orders relating to maintaining a set
distance between two persons.” Id. at 7:50–51. In such a situation, both the
threatened person and the threatening person wear security beacons, each of
which is “programmed to ‘phone’ the other beacon at alternating intervals
and request its position.” Id. at 7:62–67. When the beacons are determined
to be too close to each other, a warning message is sent to both parties
indicating that a potential violation has occurred. Id. at 7:67–8:3. If the
distance between the beacons is not increased within a set period of time, the
beacons are “triggered into emergency mode allowing the supervising
authority to track one or both the parties.” Id. at 8:3–7.
2. Overview of Buss
Buss is directed to “the field of information receiving portable devices
which use a determined location for presentation of information.” Ex. 1008,
1:9–11. Buss describes a paging system that transmits a messaging signal
within a large coverage area that is divided into a “multiplicity of areas.” Id.
at 2:12–14. The paging system includes a GPS that can identify a location
within thirty yards or meters. Id. at 2:25–30. Buss states that messages are
displayed “if the location signal of the message matches the intended
location of the device,” so that “[o]nly messages relevant to the intended
location of the user are alerted or displayed to the user.” Id. at 3:58–67.
Buss further states that “a message signal may only be alerted and displayed
if both the intended location of the device matches the location signal and
the address of the device matches the predetermined address of the device.”
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Id. at 4:24–27. According to Buss, the vicinity restriction can be inhibited,
and the receiver can receive messages independent of location. Id. at 4:47–
52.
3. Motivation to Combine Fast and Buss
Petitioner contends that a person having ordinary skill in the art would
be motivated to combine the systems described in Fast and Buss because the
combined system would ensure the user’s safety, and also “provide the user
information concerning points of interest along the user’s path, while
filtering messages based on user direction of travel relative to a point of
interest.” Pet. 21–22. Petitioner cites Dr. Reynolds’s testimony in support
of this contention:
One of ordinary skill in the art would readily recognize
the benefits of combining the systems of Fast and Buss. In the
combined system, the GPS enabled message display device of
Buss would be incorporated into the GPS enabled transmitter
beacon of Fast and would trigger events such as alarms and
displays based on various triggering conditions that include
provisions for time, place, place along path, presence or
absence in defined zones or areas, and direction of travel. The
combined system would combine the ability to trigger events
with consideration for overlapping areas, as in Fast, with the
ability to use Buss’s predefined paths, and to focus a range of
bearings along that path, to determine whether the user with the
mobile device was traveling in a desired direction relative to a
particular point of interest. In the combined system, Fast’s
consideration for safety gains the advantages of Buss’s support
for predetermined paths, which could capture an intended route
for a user who is to be kept safe.
Ex. 1009 ¶ 54 (internal citations omitted).
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to combine the teachings of Fast and Buss because
(1) the references are directed to different fields of application and intended
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purposes; (2) the systems described in Fast and Buss have different system
architectures; and (3) Dr. Reynolds applied an incorrect methodology in his
analysis. PO Resp. 35–41.
First, Patent Owner argues that Fast and Buss are directed to different
fields of application and intended purposes, despite the fact that both
references “generally relate to location-based subject matter.” PO Resp. 35.
According to Patent Owner, “the field of application and purpose [of Fast] is
providing a security alarm when an object wanders out of fixed zones
without regard to the destination or direction,” whereas “the application and
purpose [of Buss] is to provide filtered information based on the intended
location of a user.” Id. at 35–36. Patent Owner argues that the system
described in Fast “does not need to know or care where the user intends to
go” and “has no need to filter large amounts of information since it only
looks for zone violations.” Id. at 36. Patent Owner overstates the
differences between the references and fails to account for their common
features. Both references are generally related to using location-based
monitoring methods in order to provide specific location-relevant
information to a device carried by a user. Specifically, Fast and Buss both
describe methods of tracking the location of a device and issuing alerts or
messages based on the position of the device relative to predetermined areas.
See Pet. 15–17, 20–21; Ex. 1004, 4:1–51, 5:67–6:42, 7:36–8:7; Ex. 1008,
3:26–4:46, 6:18–54. Thus, we are not persuaded that the systems in Fast and
Buss are so different that a skilled artisan would not have thought to
combine them.
Second, Patent Owner argues that Fast and Buss have “fundamentally
different system architectures” and adding the features described in Buss to
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the Fast beacon “would not make sense, as even Fast acknowledges the
limitations of the devices ability to support additional features and
functionality.” PO Resp. 36. Therefore, according to Patent Owner, “there
would have been no technical or commercial need or even desire to add the
information filtering features of Buss to the security system of Fast.” Id.
(citing Ex. 2003 ¶ 87). As Petitioner points out, however, an “obviousness
analysis does not require bodily incorporation of one reference into another,”
and the appropriate inquiry is whether a person skilled in the art “would
have seen an apparent reason to combine the point of interest notification
functionality of Buss into Fast.” Reply 9–10 (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). Petitioner has explained sufficiently why a person
of ordinary skill in the art would have understood it to be beneficial to
incorporate the point-of-interest notification functionality described in Buss
into the system described in Fast and would have had a reasonable
expectation the combination would be successful. See Pet. 21–22 (citing Ex.
1009 ¶¶ 54–55); Reply 10–12. We do not see any basis in the record to
conclude that incorporating Buss’s notification functionality into Fast’s
system, as Petitioner and Dr. Reynolds propose, would have been uniquely
challenging or otherwise beyond the level of an ordinarily skilled artisan.
See KSR, 550 U.S. at 416, 421; Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161–62 (Fed. Cir. 2007).
Third, Patent Owner argues that Dr. Reynolds’s obviousness analysis
is improper because he “based his analysis on the perspective of a POSITA
[person having ordinary skill in the art] as of July 1998” and “completely
fails to address why a POSITA at the time of the invention in 1995 would be
motivated to combine Fast and Buss.” PO Resp. 37. According to Patent
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Owner, Dr. Reynolds’s opinions are based on improper hindsight reasoning.
Id. Patent Owner does not show sufficiently, however, that Dr. Reynolds’s
analysis relies on knowledge that was beyond the level of ordinary skill in
the art at the time of the ’381 patent, as evidenced by the disclosures in Fast
and Buss themselves. For example, Dr. Reynolds relies on Buss’s disclosure
of a GPS-enabled message display device that displays messages based on
triggering conditions including place along a path, direction of travel, and
time, and Fast’s disclosure of a GPS-enabled transmitter beacon that triggers
alarms based on triggering events that include time, place, and presence or
absence in defined zones or areas. He also explains why in his opinion a
person of ordinary skill in the art would have combined those teachings
based on the references themselves. Ex. 1009 ¶¶ 54–57. Fast has an
effective filing date of September 2, 1993, and Buss has an effective filing
date of November 1, 1993, both of which are before the earliest priority date
(November 9, 1995) claimed by the ’381 patent. Ex. 1004; Ex. 1009; Pet.
15, 20. We do not see, and Patent Owner does not demonstrate persuasively,
how the disclosures in Fast and Buss would have been beyond the level of
ordinary skill in the art as of November 9, 1995.
Accordingly, we are persuaded that Petitioner has established that a
person having ordinary skill in the art would have had reason to combine the
teachings of Fast and Buss to achieve the recited methods.
4. Claims 1 and 7
Petitioner has presented evidence showing that combining “the
functionality of Buss’s GPS-based portable pager device into Fast’s GPS-
based portable security beacon” provides a system that teaches all the
elements of independent claims 1 and 7. Pet. 21–24, 27. For example,
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Petitioner asserts that the combined system teaches “defining a plurality of
predetermined areas” (defined areas include home, school, playground, park,
and disallowed), “associating one or more events with each of said
predetermined areas; specifying at least one triggering criteria [sic] for each
of said one or more events” (alarms or notices are sent based on user’s
presence or absence from predetermined areas depending on time of day and
direction of travel), “calculating the position of (the) said roving apparatus”
(the GPS receiver calculates position), and “predetermined areas are
irregularly distributed according to predetermined points-of-interest” (zones
are arbitrarily positioned based on the locations of parks, schools, and retail
stores). Id. at 22–23, 27. Petitioner also identifies how the combined system
corresponds to element (e) of claim 1
3
as follows:
’381 claim element Disclosures in Fast and Buss
“(evaluating) performing an
evaluation of the status and position
of (the) said roving apparatus in
comparison to said at least one
triggering criteria and the position of
said predetermined areas; and i) if
(the) said evaluation determines the
roving apparatus is outside all
predetermined areas, the roving
apparatus maintains (said calcuating)
performing the evaluation of the
status and position of the roving
apparatus, without triggering an
event”
Combined system does not trigger an
alert or message if the user is outside
defined areas such as home, school,
playground, park, lake, disallowed,
and retail store zones. Pet. 23–24
(citing Ex. 1009 ¶ 55).

3
Petitioner argues that “[c]laim 7 is similar in scope to claim 1” and relies
on these disclosures with respect to claim 1 to meet the similar recitations in
claim 7. Pet. 27.
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’381 claim element Disclosures in Fast and Buss
“if (the) said evaluation determines
the roving apparatus is within one of
(the) said predetermined areas, and
said (the) at least one (said)
triggering criteria specified for (an) a
particular event is met, (the) said
particular event is triggered”
Combined system sends alarms or
messages based on user’s presence or
absence from defined areas such as
home, school, playground, park,
lake, disallowed, and retail store
zones. Pet. 24 (citing Ex. 1009
¶¶ 46–48, 55).
“if (the) said evaluation determines
the roving apparatus is within (the)
an overlapping portion of any
overlapping predetermined areas,
and (the) said at least one (said)
triggering criteria specified for an
event is met, events from any of the
overlapping predetermined areas
may be triggered in accordance with
any one of said at least one triggering
criteria for said overlapping
predetermined areas”
Fast discloses that predetermined
areas can overlap, for example, when
the school zone encompasses the
playground and lake zones. Pet. 17–
18 (citing Ex. 1004, 4:12–28 and
Ex. 1009 ¶ 47). The combined
system will transmit alerts based on
its presence within overlapping
zones. Id. at 24 (citing
Ex. 1009 ¶¶ 46–48, 55).

As an initial matter, we note that claims 1 and 7 are method claims,
and the step of triggering an event is conditional, dependent upon the
location of the roving apparatus and whether the triggering criterion has
been met. In instances in which the roving apparatus is not in a
predetermined area, or is in predetermined area but the triggering criterion
has not been met, the triggering step will not be performed. As method
claims with conditional limitations, the broadest reasonable interpretation of
claims 1 and 7 includes instances in which the triggering criterion has not
been met. Ex parte McGregor, 2015 WL 4737393 at *2 (PTAB Aug. 6,
2015) (citing Ex parte Katz, 2011 WL 514314 at *4–5 (BPAI Jan. 27, 2011);
see In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
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(claims are given their broadest reasonable interpretation during
examination). Accordingly, Petitioner need not establish that the prior art
discloses these limitations in order to meet its burden of showing that the
claims are unpatentable. See In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir.
2006) (“optional elements do not narrow the claim because they can always
be omitted”). Nevertheless, we determine, for the reasons that follow, that
Petitioner has established that the cited prior art discloses all the elements of
claims 1 and 7, including the conditional limitations.
Patent Owner makes three arguments with respect to claims 1 and 7.
First, Patent Owner argues that Fast and Buss do not teach the triggering
mechanism claimed in the ’381 patent. PO Resp. 41–45. According to
Patent Owner, claims 1 and 7 require that that two things happen in order to
trigger an event: “(1) the roving apparatus is determined to be within at least
one predetermined area that has been associated with an event, and (2)
another separate triggering criteria [sic] specified for the event is also met
while the roving apparatus is within the at least one predetermined area.” Id.
at 41. Patent Owner argues that Fast teaches that an alarm is only triggered
based on a determination of whether or not an allowed zone was exited, and
therefore “does not even teach triggering based on being within the
predetermined area of an allowed zone as required by the challenged
claims.” Id. at 44–45. Patent Owner also argues that Fast’s “disclosure of
changing zones according to time of day does not teach a triggering criteria
[sic]” because “[t]he time of day only changes or redefines the
predetermined areas” and “it does not affect the triggering mechanism.” Id.
at 44 (emphasis omitted).
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Claims 1 and 7 recite that an event is triggered if the roving apparatus
is within a predetermined area and at least one triggering criterion specified
for the event is met. Ex. 1001, 5:11–15, 5:58–67. The Specification
describes triggering criteria as including “direction of travel of the roving
apparatus, position of the roving apparatus relative to the locality, increase in
distance from the locality, time, day, date, temperature, password, or any
other criteria.” Id. at 1:53–57. Petitioner has shown sufficiently that Fast
teaches triggering events based, at least, on location and/or time. See Pet.
15–24; Reply 7–9. Specifically, Petitioner points to Fast’s description of
creating zones that are allowed or disallowed (“predetermined areas”) and
sending a warning message (“event”) when the user enters a disallowed zone
(“triggering criteria”). Pet. 16–17. Petitioner also points out that Fast
teaches that a warning message can be issued (“event”) when a zone
boundary has been violated (“triggering criteria”), and that an emergency
transmission can be avoided (“event”) by returning to the allowed zone
within a specified time (“triggering criteria”). Id.; Reply 7–8. Fast also
teaches that time can be used as a triggering criterion, such as when a
predetermined area is an allowed area during specific times, but disallowed
during other times. Ex. 1004, 4:11–23. Patent Owner does not direct us to
anything in the Specification, or the language of the claims, that requires that
the triggering criterion specified for an event within a predetermined area
must be something separate from the roving apparatus’s location within the
predetermined area. Thus, we are persuaded by Petitioner’s argument that
Fast discloses “if (the) said evaluation determines the roving apparatus is
within one of (the) said predetermined areas, and said (the) at least one
(said) triggering criteria [sic] specified for (an) a particular event is met,
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(the) said particular event is triggered” limitation of claim 1, and the
“triggering an event if . . . at least one triggering criteria [sic] for the event is
met” limitation of claim 7.
Second, Patent Owner argues that Fast and Buss do not teach
overlapping predetermined areas. PO Resp. 45–49. Patent Owner contends
that element (e) of claims 1 and 7 requires that “predetermined areas must be
capable of ‘overlapping’ one another such that events associated with both
predetermined areas can be triggered in the areas of overlap.” Id. at 45–46.
According to Patent Owner, “[i]n Fast, due to the binary logic of the allowed
and disallowed zones, zones cannot coexist in any overlapped portion in
Fast.” Id. at 46 (citing Ex. 2003 ¶ 100). Patent Owner argues that, because
there are no events associated with Fast’s allowed zones, even if the allowed
and disallowed zones in Fast are “loosely understood as overlapping, only
one event will ever be triggered, which is inconsistent with the overlapping
limitations of the ’381 Patent.” Id. at 47. Patent Owner further argues that
the restraining order embodiment described in Fast “does not teach the use
of predetermined areas, much less overlapping predetermined areas,” id. at
48, because it is based only on relative proximity, id. at 22.
Petitioner replies that Fast expressly teaches that zones and times may
overlap, such as a disallowed lake zone in an allowed park zone. Reply 6
(citing Ex. 1004, 4:22–27). Petitioner contends that Fast’s restraining order
embodiment defines a predetermined area because “a predetermined
distance from a point defines a predetermined area.” Id. at 4–5. Petitioner
also notes that the Petition “explains in detail that the combined system of
Fast and Buss includes the disallowed zones from the restraining order
embodiment” as follows:
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The combined system provides alerts based on the user’s
presence or absence from zones such as SCHOOL (which
encompasses a smaller PLAYGROUND zone) and the PARK
(which encompasses the smaller LAKE zone). Any of these
zones may overlap with zones defined by predetermined
distances (radii) around perpetrators (hereinafter
DISALLOWED zones) or fixed locations such as retail stores
(hereinafter RETAIL STORE zones).
Id. at 4 (citing Pet. 22) (internal citation omitted).
Based on our review of the record, we find Petitioner’s arguments to
be persuasive. Fast teaches that zones can overlap, such as a playground
zone within a larger school zone, or a lake within a park, and “[z]ones and
times may overlap to provide flexibility in a child’s schedule.” Ex. 1004,
4:11–32. A message or warning can be triggered based on location within a
zone and/or the time of day, and an emergency transmission can be avoided
if the allowed zone is returned to within a specified time after receiving a
warning that a zone boundary has been violated. Id.
We disagree with Patent Owner that triggering only one event in an
overlapping area “is inconsistent with the overlapping limitations of the ’381
Patent.” PO Resp. 47. Claims 1 and 7 require that, if the roving apparatus is
in a location where predetermined areas overlap, and “at least one”
triggering criterion specified for an event is met, “events from any of the
overlapping predetermined areas may be triggered in accordance with any
one of said at least one triggering criteria [sic] for said overlapping
predetermined areas.” Ex. 1001, 5:16–23, 61–67 (emphasis added). Patent
Owner’s argument that, in order to be overlapping, events from both
predetermined areas must be capable of being triggered in the areas of
overlap seems to be premised on the assumption that the events must be able
to be triggered at the same time. Claims 1 and 7, however, only require that
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events from “any of” the overlapping areas “may be triggered” if “at least
one” of the associated triggering criteria is met. According to the plain
language of the claims, if only one triggering criterion associated with an
event in one of the overlapping areas is met when the roving apparatus is
within overlapping predetermined areas, triggering that one event would
satisfy this limitation of claims 1 and 7. Additionally, the use of the word
“may” indicates possibility, not capability as, for instance, use of the word
“can” would do. Neither Patent Owner nor Dr. Brogioli have directed us to
persuasive evidence, such as a definition or description in the Specification,
that the phrase “events from any of the overlapping predetermined areas may
be triggered” requires that the claimed methods include the capability to
trigger more than one event in the overlapping areas.
Third, Patent Owner argues that Fast and Buss do not teach the
requirement of claims 1 and 7 that “events from any of the overlapping
predetermined areas may be triggered in accordance with any one of said at
least one triggering criteria [sic] for said overlapping predetermined areas.”
PO Resp. 49–50. According to Patent Owner, “[s]ince the word ‘events’ is
plural, the broadest reasonable interpretation is that two or more different
events must be capable of being triggered in the area of overlap.” Id. at 49.
We disagree. As set forth above, claims 1 and 7 do not require the capability
to trigger more than one event within the overlapping areas. Based on our
review of the record, we are convinced that the combination of Fast and
Buss discloses “events from any of the overlapping predetermined areas may
be triggered in accordance with any one of said at least one triggering
criteria [sic] for said overlapping predetermined areas” as recited in claims 1
and 7.
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After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown, by a
preponderance of the evidence, that claims 1 and 7 are unpatentable under
35 U.S.C. § 103 as obvious over the combination of Fast and Buss.
5. Claims 2 and 8
Claims 2 and 8 require that at least one triggering criterion be satisfied
when the distance between a predetermined point in a predetermined area
and the roving apparatus increases “with respect to a previously
predetermined minimum distance.” Ex. 1001, 5:26–30, 6:1–5. We are
persuaded that these claims would have been obvious over the combination
of Fast and Buss.
Petitioner cites to Fast’s description of the restraining order
embodiment in which “the event ‘an alarm condition is terminated’ is
triggered when the user leaves a DISALLOWED zone, which is defined by a
radius or minimum distance that must be kept between the user and another
person.” Pet. 25 (citing Ex. 1009 ¶ 49). Patent Owner argues that Fast’s
“restraining order embodiment does not use zones or areas to trigger
events.” PO Resp. 51. According to Patent Owner:
[C]laims 2 and 8 require an increase in distance from a
predetermined point to trigger an event, but in Fast, the alarm
will sound based on a substantial area trigger when there is a
lack of an increase in distance (i.e., when the threatening person
remains too close to the threatened person). In other words,
increasing distance actually prevents the [emergency mode]
from being triggered.
Id. at 52 (citing Ex. 2003 ¶ 117). Patent Owner also argues that Petitioner
does not account for the “previously determined minimum distance”
limitation of claims 2 and 8. Id. at 51.
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Patent Owner’s arguments are not persuasive. Specifically, Fast
discloses that “[a]ny time the person under restraining order comes within
range of the protective transmitter, the beacon is activated and appropriate
action can be taken.” Ex. 1004, 7:58–60. Fast also discloses that, “[i]f the
positions of the two beacons were found to be too close together, a warning
message would be sent to each wearer indicating that a potential violation
had occurred,” and “[i]f greater separation distance was not provided within
a predetermined time limit, both beacons would be triggered into emergency
mode.” Id. at 7:67–8:5. We agree with Petitioner that these disclosures in
Fast describe “an increase in distance from” a predetermined area or point-
of-interest (the protected person) satisfying “at least one triggering criteria
[sic]” (stopping a warning notice and/or suppressing emergency mode) with
respect to that previously determined minimum distance (when the
restrained person moves outside of a specified distance around the protected
person), as required by claims 2 and 8.
Consequently, based on our review of the record, we determine that
Petitioner has shown, by a preponderance of the evidence, that claims 2 and
8 would have been obvious over the combination of Fast and Buss.
6. Claims 3–5 and 9–11
Claims 3, 4, 9, and 10 require that at least one triggering criterion be
satisfied when “the bearing of the roving apparatus relative to a
predetermined point [of interest] falls within a predetermined range of
bearings,” or when “the bearing of a predetermined point [of interest]
relative to the heading of the roving apparatus falls within a predetermined
range of bearings.” Ex. 1001, 5:31–38, 6:6–14. Petitioner contends that
“[i]n the combined system, the portable device sends alerts as the user is
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approaching, for example, a RETAIL STORE or DISALLOWED zone
along the user’s direction of travel.” Pet. 25–26. Petitioner offers the
Reynolds Declaration in support of its contention that deriving a method to
determine whether a roving apparatus is within a range of bearings relative
to a point of interest “could have been done using obvious and simple
techniques.” Id.; see Ex. 1009 ¶¶ 52–53, 56.
Patent Owner argues that Dr. Reynolds “assumes facts based on his
hindsight interpretation of what the references could have included, as
opposed to what the references actually include,” such as “stat[ing] without
any supporting citations that Fast and Buss disclose a system ‘where a range
of bearings is already computed,’ even though that disclosure is not found in
the relevant references.” PO Resp. 53 (citing Ex. 1009 ¶ 56). According to
Patent Owner:
[T]he path mode of Buss does not disclose triggering events
relating to bearings or headings at all. The path mode
embodiment of Buss simply includes a feature where one or
more intended locations of the pager can be predicted based on
the direction that the pager is traveling. In other words,
direction of travel is used to define intended locations, not to
trigger messages to the user.
Id. at 54 (internal citations omitted).
As set forth above, we construe “bearing” to mean “measurement of
direction between two points” and “heading” to mean “direction of travel.”
In Buss’s path mode, the user enters into the device a desired path (direction
of travel) that passes through predetermined areas. Ex. 1008, 6:18–31. The
user’s direction along the path is defined by determining a change from one
predetermined area to the next (measurement of direction between two
points). Id. at 6:31–39. The device can then determine points of interest that
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are along the user’s path, and issue messages when the user within an area of
interest. Id. at 6:30–54.
We disagree with Patent Owner that Buss does not use direction of
travel to trigger messages to the user. When in path mode, messages are
alerted and displayed to the user based on the determined location and
direction of travel of the user. Ex. 1008, 6:18–54. For example, Buss
describes the use of the path mode in traffic conditions, which would
“allow[] the user to be alerted to unusual traffic conditions along the
predetermined path in advance of arrival of the traffic condition.” Id. at
6:61–64. Buss goes on to state:
Other traffic information, even though transmitted by the
paging system 10 and received and stored by the device 55,
would not be presented to the user because the device 55 is able
to sort through and determine the relevancy of the information
based upon the location or intended location of the user.
Id. at 7:1–6. Therefore, Buss describes that messages are triggered based on
the direction of travel of the user.
We are also persuaded by Dr. Reynolds’s testimony that a person
having ordinary skill in the art would know how to use conventional
techniques to define a range of bearings as recited in claims 3, 4, 9, and 10.
Ex. 1009 ¶ 56. Dr. Reynolds explains the calculations that a person having
ordinary skill in the art would have used, and testifies that “a system, such as
Fast and Buss, that can test for whether a point lies in a specific range of
bearings can easily be modified to test for any other range of bearings by
simply changing” the values described in those calculations. Id. We note
that an obviousness “analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
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the art would employ.” KSR, 550 U.S. at 418. Patent Owner does not
identify any evidence that determining a range of bearings was beyond the
skill level of an ordinarily skilled artisan. See Leapfrog, 485 F.3d at 1162.
Therefore, Patent Owner’s argument that Petitioner’s proffered explanation
regarding the prior art’s disclosure of triggering criteria based on bearing,
heading, predetermined direction, and range of direction fails because
“Petitioner does not cite any teachings from either Fast or Buss relating to
these specific triggering criteria” is unpersuasive. PO Resp. 53.
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown, by a
preponderance of the evidence, that claims 3, 4, 9, and 10 are unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Fast and Buss.
Claims 5 and 11 require that “at least one triggering criteria [sic] is
satisfied when the roving apparatus is travelling in a predetermined
direction, or range of directions.” Ex. 1001, 5:39–42, 6:15–18. Patent
Owner relies on the same arguments it made with respect to claims 3, 4, 9,
and 10. PO Resp. 55 (“This same logic applies to claims 5 and 11 as well.”).
We are persuaded, based on the analysis set forth above with respect to
claims 3, 4, 9, and 10, that Petitioner has shown, by a preponderance of the
evidence, that claims 5 and 11 are unpatentable under 35 U.S.C. § 103 as
obvious over the combination of Fast and Buss.
7. Claims 6 and 12
Claims 6 and 12 require that “at least one triggering criteria [sic] is
satisfied when the calculated position of the roving apparatus falls within a
smaller overlapping predetermined area within (the) any of said
predetermined areas.” Petitioner contends that “[t]he combined system may
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provide alerts based on the user’s presence or absence from zones such as
SCHOOL (which encompasses a smaller PLAYGROUND zone) and the
PARK (which encompasses the smaller LAKE zone).” Pet. 27 (citing
Ex. 1009 ¶¶ 46–49). Patent Owner responds that Petitioner’s arguments
“should also be rejected for the same or similar reasons as delineated
above.” PO Resp. 55. Patent Owner also argues that, because “Fast does
not teach overlapping predetermined areas of any kind,” it “cannot teach the
narrower case of a smaller overlapping predetermined area within another
predetermined area.” Id. at 56 (citing Ex. 2003 ¶ 121).
As set forth above with respect to claims 1 and 7, we are persuaded
that Petitioner has established that the combination of Fast and Buss teaches
“overlapping predetermined areas” as recited in the claims. See supra
Section II.B.4. We also are persuaded, based on the analysis set forth above
with respect to the recited limitations in claims 3–5 and 9–11, that Petitioner
has shown, by a preponderance of the evidence, that claims 6 and 12 would
have been obvious over the combination of Fast and Buss. See supra
Section II.B.6.
D. Secondary Considerations of Non-Obviousness
As part of our obviousness analysis, we consider the evidence and
arguments submitted by Patent Owner regarding secondary considerations of
non-obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)
(secondary considerations include commercial success, long-felt but
unsolved needs, failure of others, and unexpected results). Here, Patent
Owner raises an argument relating to commercial success. PO Resp. 17–18.
Patent Owner states that Petitioner’s PayPal Media Network
(“PPMN”) “is believed to be a commercial embodiment of the ’381 Patent’s
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claimed methodologies.” PO Resp. 17 (citing Ex. 2005). According to
Patent Owner, Petitioner acquired Where, Inc. (“WHERE”) in order to
launch PPMN, and that “[o]ne of WHERE’s most significant assets was a
patent entitled ‘Location-Based Services,’ which was filed on May 27, 2005,
and issued on December 7, 2010, as U.S. Patent No. 7,848,765 (‘WHERE
Patent’).” Id. (citing Exs. 2006, 2007). Patent Owner argues that the
WHERE Patent “claims methods similar to, and in some ways broader than,
the claimed methods of the ’381 Patent (insofar as the ’381 Patent would be
anticipating prior art to the WHERE Patent).” Id. at 18 (citing Ex. 2003
¶ 60). Patent Owner concludes that “[t]he $135 million that Petitioner paid
for WHERE to launch PPMN shows the commercial value of improved
methods for location-based services, such as claimed in the ’381 Patent.” Id.
Evidence of commercial success, however, “is only significant if there
is a nexus between the claimed invention and the commercial success.”
Ormco Corp. v. Align Tech, Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006).
To establish a proper nexus between a claimed invention and the commercial
success of a product, a patent owner must offer “proof that the sales [of the
allegedly successful product] were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Patent Owner does not identify an alleged commercially-successful
product with sales directly attributable to the methods claimed in the ’381
patent. Instead, Patent Owner argues that the claimed methods are
commercially valuable because: (1) PPMN is a commercial embodiment of
the methods claimed in the ’381 patent; (2) the WHERE patent and the ’381
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patent are directed to similar methods; (3) most or all of the $135 million
Petitioner paid to acquire WHERE was attributable to the value of the
WHERE patent; and, therefore, (4) improved methods of location-based
services, such as those claimed in the ’381 patent, are commercially
valuable. PO Resp. 17–18.
We are not persuaded by Patent Owner’s arguments. As Petitioner
points out, Patent Owner does not provide any analysis of how PPMN
allegedly embodies the challenged claims. See Reply 14. Patent Owner’s
only support for this contention is a citation to its Disclosure of Asserted
Claims and Infringement Contentions that was filed in the related District
Court proceeding regarding the ’381 patent (Ex. 2005, “Infringement
Contentions”). PO Resp. 17. Patent Owner’s citation to the Infringement
Contentions, which present approximately 54 pages of claim charts and
other arguments with respect to how Patent Owner believes PPMN infringes
the ’381 patent, amounts to an improper incorporation by reference, and we
decline to consider this information that was not provided in the Patent
Owner Response.
4
Moreover, to the extent that Patent Owner’s commercial
success argument is premised on the similarities between the ’381 patent and
the WHERE patent, Patent Owner does not provide any analysis as to how
and why they are similar, and why those similarities are relevant. Patent
Owner also fails to establish what, if any, part of the $135 million Petitioner
paid to acquire WHERE is specifically attributable to the WHERE patent, as
compared to other assets acquired by Petitioner in the transaction.

4
Our rules do not permit incorporation by reference. 37 C.F.R. § 42.6(a)(3)
(“Arguments must not be incorporated by reference from one document into
another document.”).
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Patent Owner’s unsupported contentions do not establish a nexus
between the claimed methods and the alleged commercial value of improved
methods for location-based services. Accordingly, we are not persuaded that
the evidence presented amounts to a sufficient showing of commercial
success attributable to the claimed invention.

III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that claims
1–12 of the ’381 patent are unpatentable under 35 U.S.C. § 103 as obvious
over the combination of Fast and Buss.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–12 of the ’381 patent are determined to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Greg H. Gardella
Scott A. McKeown
Kevin B. Laurence
OBLON SPIVAK
cpdocketgardella@oblon.com
cpdocketmckeown@oblon.com
cpdocketlaurence@oblon.com

PATENT OWNER:

John R. Kasha
KASHA LAW LLC
john.kasha@kashalaw.com

Andrew Choung
Rex Hwang
GLASER WEIL FINK JACOBS
HOWARD AVCHEN & SHAPIRO LLP
achoung@glaserweil.com
rhwang@glaserweil.com