Omnitracs, LLC

Patent Trials and Appeals Board

Sep 3, 2021

IPR2020-01612 (P.T.A.B. Sep. 3, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Entered: September 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
PLATFORM SCIENCE, INC.,
Petitioner,
v.
OMNITRACS, LLC,
Patent Owner.
____________

IPR2020-01612
Patent 6,925,308 B2
____________

Before BART A. GERSTENBLITH, JAMES J. MAYBERRY, and
FREDERICK C. LANEY, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION
Granting Petitioner’s Request on Rehearing
37 C.F.R. § 42.71(d)
Granting Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Platform Science, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
to institute an inter partes review of claims 1–4, 6–9, 11, 12, and 15 (“the
Challenged Claims”) of U.S. Patent No. 6,925,308 B2 (Ex. 1001, “the
’308 patent”). Omnitracs, LLC (“Patent Owner”) filed a Preliminary
Response (Paper 9, “Prelim. Resp.”).
In our Decision Denying Institution of Inter Partes Review, we
concluded that Petitioner failed to demonstrate a reasonable likelihood that it
would prevail in showing that at least one claim of the ’308 patent is
unpatentable. Paper 11 (“Decision” or “Dec.”). Specifically, regarding
independent claims 1 and 12, we concluded that Petitioner’s challenge did
not show that whatever information Coffee may copy is “based on which
one of said pre-defined formatted messages was received.” Id. at 29–30
(discussing claim 1), 31–32 (discussing claim 12). Similarly, for
independent claim 7, we concluded that Petitioner’s challenge did not show
identifying certain information fields to be copied “based on said message
identification code.” See, e.g., id. at 30–31. Accordingly, we declined to
institute trial on the Challenged Claims of the ’308 patent. Id. at 37.
Petitioner timely filed a Request for Rehearing (Paper 12, “Rehearing
Request” or “Req. Reh’g”) of our Decision. For the reasons set forth below,
Petitioner’s Request is granted and we institute an inter partes review of the
Challenged Claims of the ’308 patent on all grounds asserted in the Petition.
II. STANDARD OF REVIEW
A party requesting rehearing bears the burden of showing that the
decision should be modified. 37 C.F.R. § 42.71(d). “The request must
specifically identify all matters the party believes the Board misapprehended
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or overlooked, and the place where each matter was previously addressed in
a motion, an opposition, or a reply.” Id. When rehearing a decision on a
petition, we review the decision for an abuse of discretion. 37 C.F.R.
§ 42.71(c).
III. PETITIONER’S REHEARING REQUEST
Petitioner’s Arguments
Petitioner contends that we misapprehended or overlooked that
Coffee’s1 “message 7102 is but one of a ‘number of pre-defined formatted
messages,’ i.e., messages 7101, 7102, 7103, 7104, and 7106 that the [Mobile
Data Terminal (MDT)] can receive.” Req. Reh’g 1. Petitioner contends that
“dependent on (i.e., ‘based on’) which one of these formatted messages was
received, the MDT takes corresponding action (e.g., based on receiving
‘formatted message’ 7102, creating response message 7202 and copying
information from received ‘formatted message’ 7102 to response
message 7202) – as required by the claims.” Id. at 1–2 (citations omitted).
Petitioner asserts that
while it is true that the format of MDT response message
type 7202, i.e., the arrangement of fields into which information
from a received tracker message 7102 is copied, may be the
same for each corresponding received message type 7102 (just
as in the ’308 patent at Fig. 2, 6:38–41; Pet. 17–18), the record
clearly shows that the content of the response message 7202
(i.e., what is copied into the response message fields from
received message 7102) is not always the same.
Id. at 2.

1 U.S. Patent No. 6,611,755 B1, issued August 26, 2003, from an application
filed December 19, 1999 (Ex. 1005, “Coffee”).
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As examples, Petitioner explains that if message 7102 is received, “a
response message 7202 is generated including ‘IOD’ and ‘Response’ copied
into the response message 7202.” Req. Reh’g 6. If, however, message 7103
is received, “a response message 7203 is generated including ‘Data Type
Identified’ and ‘Data bytes’ copied into the response message 7203.” Id.
(citing, inter alia, Ex. 1005, Tables 58, 59, 63, 64). Petitioner asserts that
“the difference between the two necessarily depends on the type of
‘formatted message’ that was received.” Id.
Additionally, Petitioner argues that we overlooked “that different
‘formatted message’ types, identified by the message identification code, can
be received at the MDT.” Req. Reh’g 10 (citing Pet. 28–29; Ex. 1003 ¶ 86).
Petitioner contends that it explained in the Petition that “the four digit
number, i.e., 7101, 7102, 7103, 7104, and 7106, is the ‘message
identification code,’ which ‘also identifies the type of the message
transmitted from the tracker to the MDT,’ based on which the MDT
determines what to do in response to the received message.” Id. (citing
Pet. 28–29; Ex. 1003 ¶ 86). Petitioner indicates that “[t]he MDT generates
response message 7202 only if it receives message type 7102.” Id. (citing
Pet. 32–33, 43–44; Ex. 1003 ¶ 100; Ex. 1005, 56:63–67, Tables 58, 63).
Thus, Petitioner asserts “the MDT copies information from message 7102 to
message 7202 based on receiving ‘formatted message’ 7102.” Id. at 11
(citing Pet. 32–33). Petitioner contends that “[i]f the MDT receives any
other ‘formatted message,’ i.e., 7101, 7103, 7104, or 7106, it will take action
based on which one of these ‘formatted messages’ was received.” Id.
Accordingly, Petitioner argues that the claim limitation is satisfied by the
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showing that “Coffee’s response message 7202 is generated based on the
MDT receiving ‘formatted message’ type 7102.” Id. at 12.
Discussion
With respect to independent claims 1 and 12, Petitioner has persuaded
us that we misapprehended Petitioner’s position with respect to Coffee and
whether Coffee copies certain information “based on which one of said
pre-defined formatted message was received.” In particular, we understood
Petitioner to focus on received message data 7102 and text message
response 7202, as shown in Tables 58 and 63, and, so, we focused there too.
Dec. 29–30. We did not appreciate that Petitioner also relies upon other
messages exchanged in Coffee with respect to this limitation, and only
pointed to 7102/7202 as an example. See, e.g., Pet. 28 (discussing messages
exchanged between the tracker and MDT); see also id. at 27 (“Coffee’s
predefined message packets . . . are equivalent to the claimed ‘pre-defined
formatted messages.’”). We now understand that applying the example of
7101/7202, Petitioner contends that Coffee discloses or renders obvious
“field-mapping information for indicating information to be copied from
said formatted message to a response message based on which one of said
pre-defined formatted messages was received” because if received message
data 7102 is received at the MDT, certain information is copied to text
message response 7202, but if received user data 7103 is received at the
MDT, different information is copied to user data output 7203. See, e.g.,
Req. Reh’g 5–6 (relying, inter alia, on Pet. 28–29).2

2 Petitioner also contends that “[c]ontrary to the Patent Owner’s apparent
claim interpretation followed in the Decision, the claims require only one
instance of copying information from a ‘formatted message’ to a response
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Similarly, with respect to independent claim 7, Petitioner has
persuaded us that we misapprehended Petitioner’s position with respect to
Coffee and whether Coffee copies certain information “based on said
message identification code.” Dec. 30–31. We now understand that
Petitioner contends the MDT determines the message identification code of
the message transmitted from the tracker to the MDT and based on that code
determines what to do in response to the received message. Req. Reh’g 10
(citing, inter alia, Pet. 28–29); see also Pet. 51–52 (“Coffee describes that in
order to render the response message that corresponds to the received
message, the processor of the MDT must determine the message ID number
of the received message—e.g., message ID number 7102—and match that
message ID number to the stored message ID number of the associated
response message—e.g., message ID number 7202.”).
For the reasons set forth above, we are persuaded that we
misapprehended Petitioner’s challenge to independent claims 1, 7, and 12.
Accordingly, Petitioner’s Request is granted.
Below, we consider anew Petitioner’s challenge to claims 1–4, 6–9,
11, 12, and 15 of the ’308 patent.

message based on which one of the ‘formatted messages’ was received.”
Req. Reh’g 12 (citing Dec. 29–30). As we understand this argument, even if
Coffee does not copy information from other formatted messages into
responses, the copying of information from 7102 to 7202 is sufficient to
satisfy the “based on” recitation in the claims. Petitioner’s argument is
persuasive on this record, although neither party appears to have briefed this
particular issue prior to Petitioner’s Rehearing Request.
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IV. ANALYSIS
The Asserted Grounds of Unpatentability and Declaration
Evidence
Petitioner challenges the patentability of claims 1–4, 6–9, 11, 12, and
15 of the ’308 patent on the following grounds:
Claim(s) Challenged 35 U.S.C. §3 Reference(s)/Basis
1–4, 6–9, 11, 12, 154 102(e), 103(a) Coffee
1–4, 7–9, 12 103(a) Coffee, Heijden5
Pet. 2. Petitioner supports its challenge with a Declaration by Scott
Andrews (Ex. 1003, “the Andrews Declaration”).
The ’308 Patent
The ’308 patent is directed to “text-based communications” and more
particularly to “providing a method and apparatus for automatically entering
information into pre-formatted messages in a communication terminal.”
Ex. 1001, 1:7–11. The ’308 patent explains that traditional text-based
communications between a dispatch station and a vehicle operator have

3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013.
Because the ’308 patent has an effective filing date before March 16, 2013,
we apply the pre-AIA versions of the statutory bases for unpatentability.
4 Petitioner’s listing of grounds does not include claim 4 as challenged in
what it refers to as “Ground 1A” based on Coffee under §§ 102 and/or 103,
but Petitioner’s Ground 1A heading and the discussion that follows includes
claim 4. Compare Pet. 2 (Petitioner’s grounds listing), with id. at 25
(Ground 1A heading), 43–47 (discussing claim 4). Accordingly, we
understand that Petitioner’s first ground includes claim 4.
5 U.S. Patent No. 6,880,016 B1, issued April 12, 2005 (Ex. 1006,
“Heijden”).
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several disadvantages, particularly when considering response messages
(i.e., messages sent by a vehicle operator in response to messages from a
dispatch station). Id. at 2:21–29. In particular, the ’308 patent indicates that
manually entering information (a) may lead to errors in the entries and (b) is
a slow process, which can delay the vehicle operator from transporting
goods as quickly as possible. Id. The ’308 patent states that “[w]hat is
needed is a method and apparatus for allowing information to be entered
quickly into such response messages to minimize the chances of error and to
reduce the vehicle operator’s time spent sending response messages.” Id. at
30–33.
Figure 1 is reproduced below:

Figure 1 of the ’308 patent “illustrates a communication system 100 in
which the method and apparatus for automatically entering information into
formatted messages is used.” Ex. 1001, 3:36–38; see id. at 3:1–3. The
’308 patent explains that “[d]ispatch center 106 and vehicle 108 are capable
of communication with each other via central station 102 and satellite 104.”
Id. at 3:38–40. “In one embodiment, vehicle 108 is a commercial trucking
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vehicle having a mobile communications terminal (MCT) mounted in a
tractor or cab of the vehicle, not shown [in Figure 1].” Id. at 3:50–52. The
’308 patent states, “[t]he MCT is capable of respectively transmitting and
receiving communication signals to and from central station 102 via data
satellite 104.” Id. at 3:52–55.
The ’308 patent explains the following regarding messages
transmitted between the MCT and the central station:
Information transmitted between the MCT and central
station 102 is accomplished using formatted messages,
otherwise known as “macro” messages, or pre-formatted
messages. Formatted messages are useful because they
minimize the amount of information being transmitted, thus
reducing communication costs. Cost savings are achieved by
transmitted only pertinent data, without sending “overhead”
information.
Ex. 1001, 3:59–66. Figure 2 is reproduced below:

Figure 2 of the ’308 patent “illustrates one embodiment of a formatted
message 200 which instructs vehicle 108 to pick up goods at one location
and deliver the goods to a second location within given time constraints.”
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Id. at 4:1–4; see id. at 3:4–6. The ’308 patent states that the type of message
shown in Figure 2 is “typically known in the transportation industry as a
‘load assignment’ message.” Id. at 4:4–5.
The ’308 patent describes the following regarding “formatted
message 200”:
Formatted message 200 comprises information fields 202
through 216. When a formatted message is transmitted, only
the information contained in the information fields, plus some
overhead information, is transmitted. The other information in
the formatted message 200 is not transmitted, for example, the
words “From”, “Date:”, “Time:”, “Message: Please proceed
to”, “and pick up”, “by”, . . . “Deliver to”, . . . [and] “by” . . . .
When formatted message 200 is created at, for example, central
station 102, an operator first chooses which formatted message
to send to vehicle 108 from the total number of formatted
messages which are already defined. In this example, the
operator chooses to send a load assignment message, which has
been predefined as having a message identification code of “1”.
After choosing formatted message 200, the operator then enters
information into the information fields 202 through 216.
Ex. 1001, 4:11–26. The ’308 patent explains that a variety of formatted
messages can be defined that allow vehicle 108 to transmit status and
operational information to central station 102, including “message
acknowledgments, vehicle location, speed, and direction, engine
characteristics, arrival and departure notifications, and so on.” Id. at 4:46–
51. Each predefined, formatted message is assigned “a unique message
identification code for identifying the type of formatted message. For
example, formatted message 200 could be given a message identification
code of ‘1’, while another formatted message instructing vehicle 108 to
report its present location could be given a message identification code of
‘2’.” Id. at 4:53–60.
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The ’308 patent explains the following regarding the message
identification code:
The message identification code is used by central
station 102 and vehicle 108 to determine which type of
formatted message is being received so that it can be “decoded”
correctly. For example, when a formatted message having a
message identification code of “1” is transmitted to vehicle 108,
only the message identification code and the information fields
are sent. This information is received by a processor onboard
vehicle 108 that determines that it is a load assignment message
based on the message identification code, and that the received
information is in a format in accordance with a predefined
“template” stored locally to vehicle 108 (or central station 102,
as the case may be). The template comprises information
relating to overhead information that is not transmitted, i.e., the
words “Message: Please proceed to” and other non-fielded
information which comprises a formatted message. The
template also contains information relating to each information
field. For example, a received message having a message
identification code of “1” is defined as a message having
8 information fields 202 through 216, and in one embodiment, a
definition of how much information is contained in each field,
for example, the number of bits or characters which represent
each information field. In another embodiment, the template
does not define how much information is contained within each
information field.
Using the template information, the received information
can then be used to reconstruct the original formatted message
and presented to a user at either vehicle 108 or at central
station 102.
Ex. 1001, 4:61–5:22.
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Figure 3 is reproduced below:

Figure 3 of the ’308 patent “illustrates a functional block diagram of
communication terminal 300 used to transmit and receive information
relating to formatted messages.” Ex. 1001, 5:23–25; see id. at 3:7–9. The
functional blocks shown in Figure 3 can be used onboard vehicle 108 or at
central station 102. Id. at 5:25–28.
The ’308 patent explains that “[c]ommunication terminal 300
comprises receiver 302 for receiving information relating to formatted
messages.” Ex. 1001, 5:32–33. “The received information, comprising a
message identification code and one or more information fields, is provided
to processor 304, where it is decoded for presentation to a user of
communication terminal 300.” Id. at 5:45–48. According to the ’308 patent,
“[p]rocessor 304 determines the message identification code of the received
information and uses a predefined template stored in memory 306
corresponding to the message identification code to reconstruct the
formatted message, using information stored in memory 306 and the
information fields of the received information.” Id. at 5:50–55. “The
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reconstructed message may then be stored within memory 306 as a
formatted message and/or presented to the user via output device 308.” Id.
at 5:55–58. And, output device 308 may be a display device, such as a
computer screen or monitor. Id. at 6:12–13.
Figure 5 is reproduced below:

Figure 5 of the ’308 patent “illustrates a flow diagram of one embodiment of
a method for automatically entering information into formatted messages in
a communication terminal.” Ex. 1001, 7:48–50; see id. at 3:15–17. The
’308 patent explains the following regarding Figure 5:
In step 500, a formatted message is selected to respond to. The
formatted message comprises a message identification code and
a number of information fields, the information fields filled in
by a sender of the formatted message. The message may be
chosen as a message which is currently-displayed by output
device 308, or it may be selected from a number of messages
stored within a memory of the communication terminal.
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In any case, a request to respond to the selected message
is entered using input device 310. Processor 304 receives the
user’s request to respond to the selected formatted message.
The request indicates which formatted message the user wishes
to respond, either explicitly with an indication of which
formatted message to respond, or implicitly by processor 304
knowing which formatted message the user is viewing when the
response request is entered.
Processor 304 then determines the message identification
code of the formatted message to which a response is desired,
as shown in step 502. The message identification code is either
provided explicitly along with the request to respond, or it is
determined by processor 304 identifying the selected formatted
message and determining the message identification code by
accessing memory 306. Memory 306 contains information
linking each received formatted message with a corresponding
message identification code. In step 504, processor 304
identifies information fields from the formatted message to be
copied into the response message using field-mapping
information stored in memory 306. The field-mapping
information comprises a number of stored message
identification codes and corresponding field identification
information for each stored identification code. The field
identification information identifies which information fields
from each type of formatted message is copied into information
fields of corresponding response messages. . . .
After processor 304 has identified the field-mapping
information corresponding to the identified message
identification code, a response message is created and provided
to output device 308, shown as step 506. Processor 304 copies
information fields from the message being responded to into the
response message information fields as directed by the field-
mapping information corresponding to the message
identification code of the formatted message.
In step 508, the user enters information into any
information fields that were not filled in automatically by
processor 304. Some response messages may not need any user
input, while other response messages may rely heavily on user
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input. Generally, the user will be able to alter certain
information fields, as allowed by the field-mapping
information. . . .
After the user has entered information into the response
message, the response message is provided to processor 304,
where it is then transmitted to central station 102 in step 510.
Of course, the entire response message is not transmitted.
Processor 304 transmits a message identification code
corresponding to the response message type, and each
information field. Generally, some kind of formatting
information is transmitted as well, such as an indication of
stop/start bits between information fields, error correction
coding, and so on.
Id. at 7:49–8:57.
Illustrative Claim
Claims 1, 7, and 12 are the independent claims challenged in this
proceeding. Claim 1 is illustrative of the claimed subject matter and is
reproduced below with Petitioner’s bracketing added for reference:
1. [pre] A communication terminal, comprising:
[1a] a receiver for receiving a formatted message out of a
number of pre-defined formatted messages, comprising a
message identification code and a plurality of information
fields;
[1b] an output device for presenting said formatted
message to a user of said communication terminal;
[1c] an input device for responding to said formatted
message;
[1d] a memory for storing said formatted message and for
storing field-mapping information, said field-mapping
information for indicating information to be copied from said
formatted message to a response message based on which one
of said pre-defined formatted messages was received;
[1e1] a processor for creating said response message in
response to an indication from said input device of a request to
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respond to said formatted message, [1e2] said response message
comprising at least one response message information field,
[1e3] wherein information from at least one of said plurality of
information fields of said formatted message is copied into at
least one of said response message information fields based on
said field-mapping information; and
[1f] a transmitter for transmitting said information
relating to said response message.
Ex. 1001, 9:2–24.
Level of Ordinary Skill in the Art
Petitioner, supported by Mr. Andrews’s testimony, proposes that a
person of ordinary skill in the art at the time of the invention
would have had at least a Bachelor of Science degree (or
equivalent) in electrical engineering, computer engineering,
computer science, or a related technical field, and at least
2–3 years of experience in the fields of messaging systems, and
wireless communication devices, or an equivalent advanced
education in the field of messaging systems, including wireless
communication devices.
Pet. 12 (citing Ex. 1003 ¶ 28).
Patent Owner “does not dispute Petitioner’s offered level of ordinary
skill in the art” for purposes of this proceeding. Prelim. Resp. 8.
At this stage of the proceeding, we find Petitioner’s proposal
consistent with the level of ordinary skill in the art reflected by the
’308 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt
Petitioner’s unopposed position as to the level of ordinary skill in the art for
purposes of this Decision.
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V. CLAIM CONSTRUCTION
In this inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2019). The
claim construction standard includes construing claims in accordance with
the ordinary and customary meaning of such claims as understood by one of
ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
claims in accordance with their ordinary and customary meaning, we take
into account the specification and prosecution history. Phillips, 415 F.3d at
1315–17.
Additionally, only terms that are in controversy need to be construed,
and these need be construed only to the extent necessary to resolve the
controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
are in controversy, and only to the extent necessary to resolve the
controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
an inter partes review).
The only dispute pertaining to claim construction at this stage of the
proceeding is whether the phrase “a process for creating said response
message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner

6 As noted above, Petitioner raises a second claim construction issue in its
Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require
only one instance of copying information from a formatted message to a
response message based on which formatted message was received).
Petitioner did not raise this issue in the Petition, Patent Owner has not had an
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contends that the phrase should be interpreted as a means-plus-function
limitation, whereas Patent Owner contends that it should not. Compare
Pet. 2–7 (advocating for a means-plus-function construction), with Prelim.
Resp. 9–11 (advocating for an ordinary and customary meaning). At this
stage of the proceeding, the dispute between the parties regarding the
construction of this claim phrase does not impact our Decision.
Accordingly, we need not construe expressly any claim terms for the
purpose of this Decision.
VI. ANALYSIS
Legal Standards – Anticipation
“[A] claim is anticipated ‘if each and every limitation is found
expressly or inherently in a single prior art reference.’” King Pharm., Inc. v.
Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas
Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)).
Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35
(Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the
art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368
(Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s
whether one skilled in the art would reasonably understand or infer from the
[prior art reference’s] teaching that every claim element was disclosed in
that single reference” (alteration in original) (quotation omitted)).

opportunity to respond to Petitioner’s Rehearing Request, and it is not clear
that there is a present controversy between the parties with respect to the
meaning of the claim in this regard.
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Legal Standards – Obviousness
The U.S. Supreme Court set forth the framework for applying the
statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17–18 (1966):
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.
The Supreme Court explained in KSR International Co. v. Teleflex Inc. that
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit.
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)).
“Whether an ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.” WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
“[W]here a party argues a skilled artisan would have been motivated to
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combine references, it must show the artisan ‘would have had a reasonable
expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
Anticipation by and/or Obviousness over Coffee
Petitioner contends that Coffee discloses each and every element of
claims 1–4, 6–9, 11, 12, and 15 and/or Coffee would have rendered the
subject matter of claims 1–4, 6–9, 11, 12, and 15 obvious to one of ordinary
skill in the art at the time of the invention. Pet. 25–62. We address
Petitioner’s contentions as to anticipation together with Petitioner’s
contentions as to obviousness with specific delineation of each.
Level of Ordinary Skill in the Art
As noted above, and for the reasons discussed therein, we adopt
Petitioner’s proposed definition for the level of ordinary skill in the art. See
supra § IV.D.
Scope and Content of the Prior Art – Coffee
Coffee is directed to “asset management systems, and more
particularly to a system for tracking the real-time location and status of
vehicles of a fleet, and for communicating between the vehicles and a
dispatcher or expediter in the fleet offices.” Ex. 1005, 1:6–10. Coffee
explains that “[t]he primary goal of the fleet management system . . . is to
provide fleet management information to customers (i.e., the owners,
operators, subscribers, or users of the fleet . . .) to enable them to manage
their assets more profitably.” Id. at 2:38–50. Coffee provides several means
to accomplish this goal by: (1) giving a fleet operator the capability to locate
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vehicles of the fleet in real-time; (2) allowing the operator to communicate
with those vehicles over a very efficient and reliable wireless network;
(3) enabling the operator to receive timely, accurate data regarding what
each vehicle of the fleet is doing; and (4) providing the operator with an
ability to correlate the position and messaging information generated by the
system with the operator’s other management information systems to
provide an integrated information source for improved fleet business
management. Id. at 2:50–64.
Figure 23 is reproduced below:

Coffee’s Figure 23 “illustrates an exemplary placement of the tracker, a
Mobile Data Terminal (MDT) and antennas on a typical fleet vehicle, the
vehicle being further equipped for accommodating various sensors for event
reporting.” Id. at 8:1–4. Coffee explains the following regarding the MDT:
The MDT 190 serves as a control and display unit (CDU)
for the tracker 135 (FIGS. 23, 26), primarily for the
convenience of the vehicle operator.
The MDT is a small conventional programmable
computer similar to but generally smaller than a notebook PC
(with customer-specific software) and display terminal with
liquid crystal display (LCD), keypad, associated memory, and
internal (integrated) circuitry, to enable display of text and other
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data, and to enable the vehicle operator to respond to text
paging messages and to enter other data to be transmitted to the
dispatcher. MDT 190 and tracker 135 communicate over a
balanced, differential, asynchronous serial interface, which, in
the exemplary embodiment, uses a Texas Instruments (TI)
SN65C1167NS dual differential driver/receiver interface
circuit.
. . . .
In keeping with NavCore and other message numbering
conventions, each interface is identified by a different
thousands place in the message ID number. The MDT-tracker
interface uses 7000 as the interface identifier. Messages
transmitted by tracker 135 use ID numbers beginning with 7100
and messages received by it use ID numbers beginning with
7200. In the exemplary embodiment, the message IDs are:
For tracker to MDT:
7101 Navigation Data
7102 Received Message Data
7103 Received User Data
7104 Available Message Data
7106 User Data Message List
For MDT to tracker:
7201 Data Request
7202 Text Message Response
7203 User Data Output
7204 Request Available Message Data
7205 Request Message
7206 Request User Data Message List
When requested by MDT 190 (by action of the vehicle
operator), tracker 135 sends navigation data (message 7201,
Table 57, Appendix B) including current position, velocity, and
time at approximately 1 Hz to the MDT. When the tracker
receives a “Request Message” (7205, Table 66) from the MDT,
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it sends the data for the requested text message to the MDT
using a “Received Message Data” packet (7102, Table 58). The
latter either contains the full text of the received message or an
ID number indicating a “canned” text to display. A response
set is sent along with the text message, containing a unique set
of text items that can be selected by the vehicle operator in
response to the received message.
Each message has an identifier, or issue of data (IOD), a
rollover counter, to differentiate messages within the system
and to associate messages with their responses. When the
operator selects a response to a message (e.g., an inquiry from
the dispatcher), that message’s IOD is sent back to the tracker
with the response in message 7202. The response is selected
using arrow keys on the face (keypad) of the MDT.
Id. at 54:66–55:67.
Coffee explains that a “pre-defined message definition” packet
provides trackers with a text message that should be associated with a
specified “pre-defined message ID.” Ex. 1005, 19:64–67. “Trackers
receiving this message store the pre-defined message definition . . . . [and]
[t]his stored association is then used to display the appropriate message upon
receipt of a ‘Pre-Defined Message Packet.’” Id. at 20:4–9. The packet
“allows a shorter message format for ‘canned’ user messages that are
frequently transmitted by an individual customer. Since the trackers know
the text of these messages a priori, only a message ID and a 16-bit cyclic
redundancy check (CRC) need be sent by the NDC.” Id. at 20:9–13. Coffee
states that “[t]he ID identifies the message and the CRC allows the tracker to
determine whether the text matches the CRC of the known pre-defined
message.” Id. at 20:13–15.
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Coffee further explains the following regarding receiving and
responding to messages:
In the “Received Message Data” (Table 58), the Message
Type indicates whether the message contains a canned or fall
[sic] text message. If the message is canned, the next byte
contains the ID number of the message; otherwise, it contains
the length in bytes of the received message text. The next
2 bytes contain the IOD number of the received text message
and the user response if a message has already been sent. The
next 3 words indicate the date and time the message was
received. The next word contains the number of valid
responses in the response list. Next is the list of 4 text
responses to be displayed above softkeys of the MDT. Unused
response strings are zero filled. If the message is full text, the
characters of the message follow in order. . . .
. . . .
Tracker 135 is programmed with a set of canned “User
Data” messages, a list of which (message 7106, Table 61) may
be requested for display on the MDT by the driver’s sending
“Request User Data Message List” message (7206, Table 67).
Upon subsequent receipt of a “Request Message” for a specific
“User Data” message, the tracker will provide the text of that
requested message to the MDT. . . .
. . . .
When the vehicle operator selects a response to a
received text message, the MDT sends that response to the
tracker using a Text Message Response message (7202,
Table 63) which contains the IOD of the message being
answered and the numeric response value.
The tracker is used to send customer-defined data to the
NDC . . . .
Ex. 1005, 56:5–57:2.
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Coffee’s Tables 58 and 63, described in detail above, are reproduced
below:

Id. at 101:14–35 (Table 58), 102:44–54 (Table 63). Coffee’s Table 58
shows “Received Message Data” 7102 (Ex. 1005, 55:54–55), and Coffee’s
Table 63 shows “Text Message Response” 7202 (id. at 56:65).
Differences Between the Prior Art and the Claims;
Motivation to Modify
a. Independent Claim 1
i. 1pre and Limitations 1a–1c
Petitioner contends that Coffee discloses a “communication terminal,”
as recited in 1pre, by disclosing a mobile data terminal (MDT) that resides in
the fleet vehicles. Pet. 25–26 (citing Ex. 1003 ¶¶ 76–78; Ex. 1005, 1:6–10,
15:33–37, 45:25–34, 54:66–55:9, Fig. 23).
Petitioner asserts Coffee discloses “a receiver for receiving a
formatted message out of a number of pre-defined formatted messages,
comprising a message identification code and a plurality of information
fields,” as recited in limitation 1a, by disclosing that a tracker includes two
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receivers 207, 208 and that the MDT includes a receiver for receiving
messages from the tracker. Pet. 26–27 (citing Ex. 1003 ¶¶ 79–82; Ex. 1005,
45:29–34, 45:39–44, 46:11–16, 55:9–13, Fig. 24). Petitioner contends that
Coffee’s system uses a predefined message packet, which, when received,
displays the appropriate message (i.e., a formatted message). Id. at 27
(citations omitted). Petitioner asserts that “[t]his message configuration
‘allows a shorter message format for ‘canned’ user messages that are
frequently transmitted by an individual customer.” Id. (citations omitted).
Petitioner argues that one of ordinary skill in the art “would have understood
that Coffee’s predefined message packets, in which some of the data is not
sent in the message, but is instead provided at the receiver based on the
stored ‘pre-defined message definition’ are equivalent to the claimed
‘pre-defined formatted messages.’” Id. at 27–28 (citing Ex. 1003 ¶ 84).
Petitioner contends that each message exchanged between Coffee’s
tracker and MDT is a formatted message that has a four digit message ID
number (i.e., the message identification code), where the ID number
identifies the interface from which the message is sent and the type of
message transmitted from the tracker to the MDT or from the MDT to the
tracker. Pet. 28 (citing Ex. 1003 ¶ 85; Ex. 1005, 55:27–34). Petitioner
asserts that messages sent between the tracker and MDT include multiple
information fields, for example a header, an ID number indicating a canned
text to display or the full text of the received message, the issue of data
(IOD), and a set of user selectable responses. Id. at 29 (citing Ex. 1003 ¶ 88;
Ex. 1005, 55:55–60, Table 58). Petitioner points to Table 58 as showing “an
exemplary configuration of a ‘Received Message Data’ packet. Id. (citing
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Ex. 1003 ¶ 88; Ex. 1005, Table 58). Petitioner includes the following
annotated version of Coffee’s Table 58:

Pet. 32. Coffee’s Table 58 illustrates a received message data packet, which
Petitioner annotated to add (1) the phrase “Information Fields” with an
arrow pointing to highlighted portions identifying the “Header,” “IOD,”
“Response 1 Text,” “Response 2 Text,” “Response 3 Text,” and
“Response 4 Text,” and (2) the phrase “Message Identification Code” with
an arrow pointing to “7102.” Id.
Petitioner explains that “[t]he ‘Message Type’ in Table 58 indicates
whether the message is a full text message, or points to ‘canned’ text.”
Pet. 30 (citing Ex. 1003 ¶ 89; Ex. 1005, 55:55–57, Table 58). Petitioner
states that “[a] set of ‘canned’ messages (i.e., pre-defined message content)
is stored in memory of the tracker” and “[e]ach message also includes a
unique identifier, the issue of data (IOD), to differentiate messages within
the system, and to allow the recipient of a response message to associate that
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response with the original request message.” Id. (citing Ex. 1003 ¶¶ 90–91;
Ex. 1005, 56:45–49, 55:61–63, Tables 58, 61, 63).
Petitioner contends that Coffee discloses “an output device for
presenting said formatted message to a user of said communication
terminal,” as recited in claim 1, by disclosing that the MDT includes a
display for presenting text and other data to the vehicle operator. Pet. 30
(citing Ex. 1003 ¶ 93; Ex. 1005, 54:66–55:9). Additionally, Petitioner
asserts that Coffee discloses “an input device for responding to said
formatted message,” as recited in claim 1, by disclosing that the MDT
includes a keypad, which allows the vehicle operator to respond to received
messages and to enter other data to be transmitted to the dispatcher. Id.
(citing Ex. 1003 ¶ 95; Ex. 1005, 54:66–55:9).
In the Preliminary Response, Patent Owner does not contest that
Coffee discloses 1pre and limitations 1a–1c. See generally Prelim. Resp.
Based on the present record, including the arguments and evidence
provided by Petitioner, we find that Coffee discloses 1pre7 and
limitations 1a–1c.
ii. Limitation 1d
Petitioner asserts that Coffee “discloses and/or renders obvious” “a
memory for storing said formatted message and for storing field-mapping
information, said field-mapping information for indicating information to be
copied from said formatted message to a response message based on which
one of said pre-defined formatted messages was received,” as recited in

7 Because we find that Coffee discloses the preamble of claim 1, we need not
determine whether the preamble is limiting.
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claim 1, by disclosing that the MDT “includes ‘memory, and internal
(integrated) circuitry, [] to enable the vehicle operator to respond to text
paging messages and to enter other data to be transmitted to the dispatcher.”
Pet. 31 (citing Ex. 1003 ¶ 98; Ex. 1005, 54:66–55:9) (alteration by
Petitioner). Petitioner contends that “the MDT stores the received message
while it is displayed to the operator.” Id. (citing Ex. 1003 ¶ 98; Ex. 1005,
56:1–3).
Petitioner asserts that Coffee’s received message also includes
information fields corresponding to possible responses from which the user
can select a response, as shown in Table 58 reproduced above. Pet. 31
(citing Ex. 1003 ¶ 99; Ex. 1005, 55:55–60). Petitioner contends that
“[w]hen the vehicle operator enters a response to the received message with
the message ID number 7102, the MDT transmits a response message with
the message ID number 7202 back to the tracker.” Id. at 32 (citing Ex. 1003
¶ 100; Ex. 1005, 55:35–47, 56:63–67). Petitioner further asserts that the
response message (shown in Table 63) includes “some of the same
information as the received message” (shown in Table 58), “such as header
information, the IOD, and the response selected by the operator.” Id. (citing
Ex. 1003 ¶¶ 100–101; Ex. 1005, 56:63–67, Tables 58, 63). Petitioner
includes the following side-by-side annotated versions of Coffee’s Tables 58
and 63:
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Pet. 33. Table 58, identifying the received message data 7102, and Table 63,
identifying the text message response 7202, are shown above, including
Petitioner’s annotations which place red boxes around the “Header,” “IOD,”
and four “Response” “Text[s]” of Table 58 and the header, IOD, and
Response of Table 63. Id. at 33 (citing Ex. 1003 ¶ 101; Ex. 1005, Tables 58,
63).
Petitioner asserts that “[a]t least some of the information included
with the received formatted message (e.g., header, IOD, and selected
response) is copied over from the received message to the response
message.” Pet. 33 (citing Ex. 1003 ¶ 102). Petitioner contends that one of
ordinary skill in the art “would have understood that this correspondence
between fields in the request message and fields in the response message is
‘field-mapping.’” Id. (citing Ex. 1003 ¶ 102).
To the extent not explicitly disclosed, Petitioner also asserts Coffee
inherently discloses certain elements of limitation 1d. Pet. 33. Specifically,
Petitioner asserts that one of ordinary skill in the art would have understood:
(1) that, in the context of Tables 58 and 63, “the inclusion of field names of
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the received message in the response message is based on field mapping
information” and (2) “that, in order to implement this correspondence
between the fields of the request message and the fields of the response
message, Coffee’s system must inherently use ‘field-mapping information’
to know which field from the received message is to be copied into which
corresponding field in the response message.” Id. at 33–34 (citing Ex. 1003
¶ 103). Petitioner contends that “[w]ithout such field-mapping information,
the system would not be able to copy over information from the received
message into the correct fields of the response message” and “would risk
operator error in hunting down and correctly copying over the header, IOD,
and response fields so the information in the response message would be
correctly matched with the information in the received message.” Id. at 34
(citing Ex. 1003 ¶ 103). Petitioner asserts that “[i]t is not reasonable to
imagine that a [person of ordinary skill in the art] at the time of the invention
would have left such a tedious task, routinely performed on a computer, to a
human.” Id. (citing Ex. 1003 ¶ 103).
Additionally, with respect to whether Coffee’s MDT includes a
memory that stores field-mapping information, Petitioner contends:
To the extent that Coffee is deemed not to explicitly or
inherently disclose that “field-mapping information” is stored
on the MDT, it would have been obvious to a [person of
ordinary skill in the art] to include “field-mapping information”
with the “Received Message Data” packet (Table 58), the “Text
Message Response” (Table 63), and/or data “to enable the
vehicle operator to respond to text paging messages,” all of
which are stored, at least temporarily, in memory of the MDT.
Pet. 34 (citing Ex. 1003 ¶ 104; Ex. 1005, 54:66–55:9). Further, Petitioner
asserts that one of ordinary skill in the art would have understood that field-
mapping information “would necessarily need to be available at the MDT to
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generate a response message that includes at least some of the same
information as was included with the received message.” Id. (citing
Ex. 1003 ¶ 105). Petitioner contends that “without such field-mapping
information, information from the received message could not be copied to
appropriate corresponding fields in the response message because the MDT
would have no idea which copied information goes where in the response
message.” Id. at 34–35 (citing Ex. 1003 ¶ 105).
Patent Owner raises several arguments in response to Petitioner’s
discussion of limitation 1d. We address each in turn.
First, Patent Owner contends that Petitioner fails to show Coffee
discloses and/or renders obvious “field-mapping information for indicating
information to be copied from said formatted message to a response message
based on which one of said pre-defined formatted messages was received.”
Prelim. Resp. 16; see id. at 15–20. Patent Owner asserts that “[w]hile
Petitioner identifies information that is the same in the ‘Received Message
Data’ (7102) message and the ‘Text Message Response’ (7202) message,
Petitioner never shows that any fields are copied into the response, and there
is no disclosure in Coffee stating otherwise.” Id. at 16.
Although Coffee does not use the terms “copy” or “copied” in the
description of its process, Coffee describes steps that support Petitioner’s
argument that Coffee copies the IOD.8 In describing the MDT, Coffee
explicitly describes certain actions as those of the vehicle operator, for
example, “select[ing] a response to the received message.” Ex. 1005, 55:63–

8 We focus on the IOD because, as discussed infra, we do not find, on this
record, that Petitioner establishes that Coffee copies the “Header” or
“Response” fields. See infra § VI.C.3.a.v.
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64 (“When the operator selects a response to a message . . . .”). In contrast,
however, when describing that the formatted message’s IOD is sent back to
the tracker in the response message, Coffee does not attribute that action to
the vehicle operator. See Ex. 1005, 63–66 (“When the operator selects a
response to a message (e.g., an inquiry from the dispatcher), that message’s
IOD is sent back to the tracker with the response in message 7202.”), 56:63–
67 (“When the vehicle operator selects a response to a received text, the
MDT sends that response to the tracker using a Text Message Response
message (7202, Table 63) which contains the IOD of the message being
answered and the numeric response value.”). On the preliminary record
before us, these descriptions by Coffee support Petitioner’s argument that
Coffee’s system automatically copies the formatted message’s IOD to
include it in the response message.
Additionally, our understanding of Coffee is supported by
Mr. Andrews’s testimony. Mr. Andrews considered Coffee’s disclosure and
opined that, inter alia, the IOD was copied from the formatted message to
the response message. Ex. 1003 ¶ 102; see id. ¶¶ 100–102 (testifying that
some information included with the received formatted message is copied
over from the formatted request message to the response message).
Accordingly, on the present record and at this stage of the proceeding,
Patent Owner’s first argument does not establish sufficiently that the Petition
is deficient.
Second, Patent Owner contends, “Petitioner entirely ignores that the
claims require the ‘field-mapping’ to be ‘based on which one of said
pre-defined formatted messages was received.’ Coffee explains that the
contents of the ‘Text Message Response (7202) are the same regardless of
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‘which one of said pre-defined formatted messages was received.’” Prelim.
Resp. 16.
We initially found this argument persuasive in our Decision, but, for
the reasons discussed above, that was based on a misunderstanding of
Petitioner’s position. See supra § III. On the present record and under the
burden of proof required for institution, we find persuasive Petitioner’s
argument that one of ordinary skill in the art would understand the
correspondence between fields in received message data 7102 (where 7102
is one of a number of pre-defined formatted messages (e.g., 7101, 7102,
7104, 7106)) and text message response 7202, and specifically, the copying
of the IOD, to be “field-mapping” inherently based on field-mapping
information. Pet. 33–34 (citing Ex. 1003 ¶¶ 102–103). In particular,
Petitioner’s argument and evidence is sufficient for this stage of the
proceeding to establish: (a) Coffee automatically copies the formatted
message’s IOD from received message data 7102 to include it in the text
message response 7202, for the reasons discussed above, (b) Coffee
performs this copying inherently based on field-mapping information (id. at
33–35), and (c) because Coffee’s MDT performs this action, one of ordinary
skill in the art “would have understood that ‘field-mapping information’
would necessarily need to be available at the MDT to generate a response
message that includes at least some of the same information as was included
with the received message” because “without such field-mapping
information, information from the received message could not be copied to
appropriate corresponding fields in the response message because the MDT
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would have no idea which copied information goes where in the response
message” (id. at 34–45 (citing Ex. 1003 ¶ 105)).9
iii. Limitation 1e1
Petitioner asserts that Coffee “discloses and/or renders obvious” “a
processor for creating said response message in response to an indication
from said input device of a request to respond to said formatted message,” as
recited in claim 1, by disclosing an MDT that “is a programmable computer
that includes internal (integrated) circuitry (e.g. a processor) ‘to enable the
vehicle operator to respond to text paging messages and to enter other data
to be transmitted to the dispatcher.’” Pet. 35 (citing Ex. 1003 ¶ 108;
Ex. 1005, 54:66–55:9).
Petitioner contends that “[a] message received at the MDT (the
‘formatted message’), for example, with the message ID number 7102,
includes a response set specific to the received message.” Pet. 35 (citing
Ex. 1003 ¶¶ 109–10; Ex. 1005, 55:55–67, Table 58). Petitioner asserts the

9 As noted above, Petitioner also contends it would have been obvious to
store field-mapping information on the MDT “to enable the vehicle operator
to respond to text paging messages.” Pet. 34 (citing Ex. 1003 ¶ 104;
Ex. 1005, 54:66–55:9). Patent Owner contends that “Petitioner makes a
series of ‘obviousness’ arguments which seem to argue certain claim
limitations are obviously disclosed by Coffee, rather than specifying why it
would be obvious to modify Coffee to include the claimed features.”
Prelim. Resp. 24 n.1 (citing Pet. 34–35, 38–39). Although we have not
relied specifically upon Petitioner’s proposed modification to Coffee in this
Decision, we note that, on the present record, Petitioner has provided a
reason as to why one of ordinary skill in the art would have modified Coffee
to store field-mapping information on the MDT—“to enable the vehicle
operator to respond to text paging messages.” See Pet. 34 (citing Ex. 1003
¶ 103; Ex. 1005, 54:66–55:9).
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response set “includes ‘a unique set of text items that can be selected by the
vehicle operator in response to the received message,’ for example, by using
arrow keys on the face (keypad) of the MDT (i.e., an indication to respond to
the received message from the ‘input device[]’).” Id. at 35–36 (citing
Ex. 1003 ¶¶ 109–10; Ex. 1005, 55:55–67, Table 58). Petitioner contends
that “[u]pon the vehicle operator’s input, the MDT generates a response
message with the message ID number 7202.” Id. (citing Ex. 1003 ¶¶ 109–
10; Ex. 1005, 55:55–67, Table 58).
In the Preliminary Response, Patent Owner does not contest that
Coffee discloses limitation 1e1. See generally Prelim. Resp.
Based on the present record, including the arguments and evidence
provided by Petitioner, we find that Coffee discloses limitation 1e1.
iv. Limitation 1e2
Petitioner asserts that Coffee “discloses and/or renders obvious” “said
response message comprising at least one response message information
field” as recited in claim 1, by disclosing a generated response message that
includes “information such as the IOD, the header, and the response selected
by the vehicle operator (i.e., response message information fields[]).”
Pet. 36 (citing Ex. 1003 ¶ 112; Ex. 1005, 55:61–67). Petitioner asserts that
Coffee’s Table 63 “shows an exemplary configuration of a response
message.” Id. Petitioner includes the following annotated version of
Coffee’s Table 63:
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Pet. 36. Table 63, identifying the text message response 7202, is shown
above, including Petitioner’s annotations which place red boxes around the
header, IOD, and Response of Table 63. Id. at 36 (citing Ex. 1003 ¶ 113;
Ex. 1005, Table 63).
In the Preliminary Response, Patent Owner does not contest that
Coffee discloses limitation 1e2. See generally Prelim. Resp.
Based on the present record, including the arguments and evidence
provided by Petitioner, we find that Coffee discloses limitation 1e2.
v. Limitation 1e3
Petitioner contends that Coffee “discloses and/or renders obvious”
“wherein information from at least one of said plurality of information fields
of said formatted message is copied into at least one of said response
message information fields based on said field-mapping information.”
Pet. 36–39. This limitation is similar in some respects to certain elements of
limitation 1d. Compare Ex. 1001, 9:9–14 (limitation 1d), with id. at 9:19–23
(limitation 1e3). Petitioner asserts “[t]he message received at the MDT with
the message ID number 7102 (the ‘formatted message’), includes
information fields such as header information, the IOD, and a set of
responses specific to the received message.” Id. at 36–37 (citing Ex. 1003
¶ 114; Ex. 1005, 55:55–60, Table 58). Petitioner contends the response
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message generated at the MDT with the message ID 7202 “includes the IOD
of the received message to associate the response message with the received
message, the header, and the response selected by the vehicle operator (i.e.,
response message information fields[]).” Id. at 37 (citing Ex. 1003 ¶ 115;
Ex. 1005, 55:61–67, Table 63).
Petitioner contends “[w]hen the vehicle operator responds to a
received message (e.g., an inquiry from the dispatcher), the header, the IOD,
and the selected response are automatically sent back to the tracker from the
MDT.” Pet. 37 (citing Ex. 1003 ¶ 116; Ex. 1005, 55:61–67, Tables 58, 63).
Petitioner includes the following side-by-side annotated versions of Coffee’s
Tables 58 and 63:

Id. Table 58, identifying the received message data 7102, and Table 63,
identifying the text message response 7202, are shown above, including
Petitioner’s annotations which place red boxes around the header, IOD, and
four Response Texts of Table 58 and the header, IOD, and Response of
Table 63. Id. (citing Ex. 1003 ¶ 117; Ex. 1005, Tables 58, 63). Petitioner
contends “[t]hus, Coffee describes copying information from information
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fields in the received message into corresponding fields of the response
message.” Id. at 37–38. Petitioner asserts this disclosure meets this claim
limitation because, “if Coffee did not employ such copying, the response
message would not automatically include information extracted from the
received message.” Id. at 38 (citing Ex. 1003 ¶ 118). Petitioner contends
that “if the copying were not performed based on field-mapping information,
items of information extracted from the received message would not appear
in the response message at the correct locations.” Id. (citing Ex. 1003
¶ 118).
Petitioner raises an alternative argument that “[t]o the extent that
Coffee is deemed not to explicitly or inherently disclose that information
from an information field of a received message is copied to an information
field of a response message based on ‘field-mapping information,’ it would
have been obvious to a [person of ordinary skill in the art] that the response
selected by the vehicle operator in the received message (Table 58) is
mapped and copied to the response message (Table 63).” Id. (citing
Ex. 1003 ¶ 119; Ex. 1005, 55:51–67, 56:63–67). Petitioner asserts that one
of ordinary skill in the art: (a) would have understood that “‘field-mapping
information’ would necessarily be available at the MDT to generate a
response message that includes at least some of the same data as included
with the received message”; and (b) would have recognized that “without
such field-mapping information, information from the received message
could not be copied to appropriate corresponding fields in the response
message because the MDT would have no idea which copied information
goes where in the response message.” Id. (citing Ex. 1003 ¶ 120).
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Accordingly, Petitioner contends Coffee teaches or renders obvious
limitation 1e3. Pet. 39 (citing Ex. 1003 ¶ 121).10
Patent Owner contends that Petitioner fails to show Coffee discloses
and/or renders obvious that “information is ‘copied’ or ‘filled in’ from a
formatted message to a response message.”11 Prelim. Resp. 20–25. Patent
Owner contends that Coffee “does not teach or suggest” that the fields
“Header,” “IOD,” and “Response” “are copied into a response message,
much less that they are copied ‘based on said field-mapping information.’”
Id. at 20. Below, we discuss Patent Owner’s arguments directed to each
field.
With respect to the header, Patent Owner contends that Coffee teaches
that each message has a unique header, not that the header is copied between
messages. Prelim. Resp. 20 (citing Ex. 1005, Table 89, 67:51–68:33). With
respect to the “Response,” Patent Owner contends that Coffee does not teach
that the “Response” field is copied; rather, “[w]hen the operator selects a
response, the MDT returns the ‘numeric response value,’ or ‘softkey
number,’ and not the displayed text, in the response message.” Id. at 21
(citing Ex. 1005, 56:63–67, 24:31–32, 31:50–52, Table 38). With respect to
the IOD, Patent Owner contends “Coffee never discloses that the IOD is
automatically extracted from the received message. At most, Petitioner

10 As noted above, Petitioner contends that the phrase “a processor for
creating said response message” is governed by 35 U.S.C. § 112 ¶ 6, but we
did not reach the issue of construing this term expressly because it does not
appear to be impacted by the parties’ present controversy. See supra § V.
11 “Copied” is recited in limitation 1e3, whereas “filled in” is recited in
limitation 12d. Compare Pet. 36 (discussing limitation 1e3), with id. at 61
(discussing limitation 12d).
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establishes that a response message 7202 contains the same IOD value as
received message 7102, not that it is automatically extracted.” Id. (citing
Ex. 1005, 56:63–67).
On the present record, Patent Owner’s arguments directed to the
“Header” and “Response” fields call into doubt Petitioner’s reliance upon
Coffee as teaching that those fields are copied into a response message. In
particular, Coffee describes the “standard message header format” in
Table 89 and describes “a fixed five-word header section” that includes the
“Data Word Count field,” which “indicates the number of 16-bit words
contained in the data portion of a message . . . excluding the Data Checksum
field.” Ex. 1005, 67:51–56, 67:64–67. Thus, the header appears to be
specific to each message. In light of Coffee’s description, Petitioner’s
reliance on a comparison of Tables 58 and 63, where each table shows a
“Header” field and Mr. Andrews’s testimony, does not persuade us at this
stage of the proceeding that Coffee teaches that the header is copied from a
received message into a response message.
Additionally, with respect to the “Response” field, Coffee’s Table 58
(received message data 7102) shows “Response 1 Text,” “Response 2 Text,”
“Response 3 Text,” and “Response 4 Text” whereas Coffee’s Table 63 (text
message response 7202) simply shows “Response.” Ex. 1005, Tables 58,
63.12 Coffee explains that “[w]hen the vehicle operator selects a response to
a received text message, the MDT sends that response to the tracker using a
Text Message Response message (7202, Table 63) which contains the IOD
of the message being answered and the numeric response value.” Id. at

12 Coffee’s Tables 58 and 63 were previously reproduced. See supra
§§ VI.C.2 (Coffee’s description), VI.C.3.a.ii (with Petitioner’s annotations).
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56:63–67; see also id. at 24:31–34 (indicating that “[w]hen a softkey is
pressed to respond to a message, the softkey number is returned to the NDC
server”), 31:50–51 (discussing a response that indicates “the recipient’s
softkey response”). Thus, on the present record, the response message 7202
(a) does not appear to include the text of the response chosen; rather, it
appears to include the numeric response value or softkey number, and (b) the
inclusion of that numeric response value or softkey number appears to be a
result of the operator’s selection and not copying. In light of Coffee’s
description, Petitioner’s argument and evidence does not persuade us at this
stage of the proceeding that Coffee teaches that the “Response” field is
copied from a received message into a response message.
With respect to the IOD, however, we considered the parties’
arguments in the context of the similar language of limitation 1d (“field-
mapping information for indicating information to be copied” (emphasis
added)), and found, on the preliminary record before us, that Coffee’s
description “support[s] Petitioner’s argument that Coffee’s system
automatically copies the formatted message’s IOD to include it in the
response message.” See supra § VI.C.3.a.ii. Accordingly, that same
preliminary finding supports Petitioner’s argument with respect to copying
the IOD based on field-mapping information as applied to this clause of
limitation 1e3.
vi. Limitation 1f
Petitioner asserts that Coffee discloses “a transmitter for transmitting
said information relating to said response message” as recited in claim 1, by
disclosing a tracker that “includes a wireless network interface.” Pet. 39
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(citing Ex. 1003 ¶ 124; Ex. 1005, 45:39–44). Petitioner includes the
following annotated version of Coffee’s Figure 24:

Pet. 40. Figure 24 is a “simplified block diagram of a tracker installed in a
vehicle of FIG. 23,” Ex. 1005, 8:5–6, and is shown above including
Petitioner’s annotation, which places a red box around the UHF TDMA
Network Transmitter, Pet. 40. Petitioner asserts that the RF section of the
tracker “includes a transmitter to transmit data.” Id. at 39–40 (citing
Ex. 1003 ¶ 125; Ex. 1005, 46:19).
Additionally, Petitioner asserts the tracker and the MDT “also
communicate through a serial interface (e.g., a Texas Instruments (TI)
SN65C1167NS dual differential driver/receiver interface circuit[]).” Pet. 40
(citing Ex. 1003 ¶ 126; Ex. 1005, 55:9–13). Petitioner contends, “[a]s such,
the MDT includes a transmitter for transmitting messages to the tracker.”
Id. (citing Ex. 1003 ¶ 127). Petitioner asserts that “[w]hen the vehicle
operator selects a response to the received message, the MDT sends that
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response to the tracker.” Id. (citing Ex. 1003 ¶ 127; Ex. 1005, 56:63–67,
Table 63).
In the Preliminary Response, Patent Owner does not contest that
Coffee discloses limitation 1f. See generally Prelim. Resp.
Based on the present record, including the arguments and evidence
provided by Petitioner, we find that Coffee discloses limitation 1f.
Accordingly, based on the arguments and evidence presented at this
preliminary stage, we determine that Petitioner demonstrates a reasonable
likelihood of prevailing with respect to claim 1.
b. Independent Claim 7
Independent claim 7 is directed to “[a] signal-bearing medium
tangibly embodying a program of machine-readable instructions executable
by a digital processing apparatus to perform operations for automatically
entering information into formatted messages in a communication terminal,
said operations comprising,” inter alia, “identifying which information
fields, from said plurality of information fields, to be copied into said
response message, based on said message identification code.” Ex. 1001,
9:53–57, 10:1–3 (emphasis added). Petitioner refers to this recitation of
claim 7 as limitation 7e. Pet. 52–53. Limitation 7e recites language that is
similar to limitation 1d, discussed above, and Petitioner incorporates its
argument directed to limitation 1d in its analysis of limitation 7e. See id. at
52 (incorporating, inter alia, Petition § VI.A.1.(e) directed to limitation 1d).
Limitation 7e, however, recites the plural information fields. Petitioner and
Patent Owner appear to agree that the plural form of fields in limitation 7e
requires identifying more than one information field. See, e.g., id. at 53
(relying on the Header, IOD, and Response information fields and stating
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that “at least some of the information fields included with the received
formatted message are necessarily copied over from the received message to
the response message” (emphasis added)); Prelim. Resp. 26 (noting that
claim 7 requires identifying “information fields”).13
As we found on the present record above, Petitioner has shown
sufficiently for this stage of the proceeding that only the IOD (and not the
Header and Response fields) is copied into a response message. Thus,
Petitioner has not shown that more than one information field is identified to
be copied into said response message as recited in limitation 7e. Further,
Petitioner does not assert that it would have been obvious to modify Coffee
to copy additional fields.
Accordingly, based on the record before us, Petitioner has not shown
sufficiently that Coffee discloses and/or renders obvious limitation 7e.
c. Independent Claim 12
Independent claim 12 recites similar features to independent claim 1.
See, e.g., Pet. 58–61 (addressing claim 12 and incorporating arguments
directed to claim 1); Prelim. Resp. 15–25 (addressing claims 1–4, 6, 12, and

13 Although the parties do not present this clause for construction, we note
that the plural form of fields appears to require more than one field,
especially when compared to the language of, e.g., claim 12, which recites
“identifying one or more information fields.” Ex. 1001, 10:40. In other
words, the different word choice by the patentee suggests that when the
patentee intended to include one information field, the phrase “one or more”
was used, whereas when the patentee intended to require more than one
information field, the phrase “information fields” was used. See, e.g.,
Phillips, 415 F.3d at 1314–15 (noting that a “[d]ifference among claims can
also be a useful guide in understanding the meaning of particular claim
terms” (citing Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed.
Cir. 1991)).
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15 together). For the same reasons explained in the context of our
consideration of claim 1 and the parties’ arguments and evidence directed
thereto, we are persuaded that Petitioner’s contentions are sufficiently
supported by the cited art, and, thus, Petitioner demonstrates a reasonable
likelihood of prevailing with respect to claim 12.
d. Dependent Claims 2–4, 6, 8, 9, 11, and 15
Claims 2–4 and 6 depend from claim 1, claims 8, 9, and 11 depend
from claim 7, and claim 15 depends from claim 12. Petitioner relies upon its
discussion of the independent claims in its analysis of these dependent
claims. See, e.g., Pet. 40 (addressing dependent claim 2 and incorporating
arguments from Petition §§ VI.A.1.(e)–(h)). Patent Owner relies upon its
arguments directed to the independent claims and does not raise additional
argument directed specifically to the dependent claims. See generally
Prelim. Resp.
We have reviewed Petitioner’s contentions directed to claims 2–4, 6,
and 15, and we determine, on the present record, that Petitioner has
demonstrated a reasonable likelihood of prevailing with respect to these
claims. Claims 8, 9, and 11, however, depend from claim 7, and, therefore,
the deficiency identified above with respect to claim 7 (limitation 7e) also
applies to these dependent claims. Accordingly, on the present record,
Petitioner has not demonstrated a reasonable likelihood of prevailing with
respect to claims 8, 9, and 11.
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Preliminary Conclusions as to Anticipation and
Obviousness14
For the reasons noted above, Petitioner has demonstrated a reasonable
likelihood of prevailing with respect to showing that claims 1, 2–4, 12, and
15 are unpatentable as anticipated by Coffee. Because of our preliminary
determination on anticipation, our institution of inter partes review also
includes Petitioner’s challenge that Coffee would have rendered claims 1, 2–
4, 12, and 15 obvious to one of ordinary skill in the art. See infra § VIII; 35
U.S.C. § 314(a).
Obviousness over Coffee and Heijden
Petitioner contends the combined teachings of Coffee and Heijden
would have rendered the subject matter of claims 1–4, 7–9, and 12 obvious
to one of ordinary skill in the art at the time of the invention. Pet. 62–76. In
particular, Petitioner contends,
[t]o the extent that Coffee does not explicitly disclose “field-
mapping information” that is stored on the MDT, it would have
been obvious to a [person of ordinary skill in the art] to include
“field-mapping information” with the “Received Message
Data” packet (Table 58), the “Text Message Response”
(Table 63), and/or data “to enable the vehicle operator to
respond to text paging messages,” all of which are stored, at
least temporarily, in memory of the MDT, as evidenced by
Heijden.
Id. at 62–63 (citing Ex. 1003 ¶ 214; Ex. 1005, 54:66–55:9). Patent Owner
presents arguments in response. Prelim. Resp. 27–40. Because we have
determined that the information presented in the Petition and Preliminary
Response shows that there is a reasonable likelihood that Petitioner will

14 Neither party presents evidence of objective considerations of
nonobviousness at this stage of the proceeding.
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prevail with respect to at least one of the claims challenged, we need not
address Petitioner’s additional challenge based on Coffee and Heijden at this
stage of the proceeding. See 35 U.S.C. § 314(a). Nonetheless, we provide
below a description of Heijden and observations regarding the parties’
arguments to help guide the parties during the ensuing trial.
Heijden
Heijden is directed to a method and apparatus for point-to-point
communication between a sender and a receiver by means of messages with
flexible message formats. Ex. 1006, code (57). Heijden explains that “[t]he
flexible message format contains information that allows a receiver to
interpret, understand and display the contents of the message, even if it has
previously never been received.” Id. at 9:66–10:2. Heijden states that a user
can receive, view, and send messages on a terminal. Id. at 10:24–26.
Heijden’s flexible message format consists of header information and a
series of fields, objects, maps, and actions. Id. at Fig. 2a, 12:26–30, 12:45–
13:14.
Figure 1 is reproduced below:

Heijden’s Figure 1 shows a general overview in block diagram of the
disclosed system. Id. at 11:15–16. In particular, Figure 1 shows a plurality
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of servers (SRV(m)) connected to a customer database (CDB(1)) and one or
more terminals (e.g., ILMC(1)), which includes monitor screen 6, processing
unit 1, keyboard 12, and mouse 13. Id. at 11:22–34.
Heijden explains that server SRV(1) “is provided with a processor
called InterLingua™ message server ILMS for receiving, passing or sending
messages.” Ex. 1006, 11:47–49. “Part of the ILMS processor is indicated
with IS (=InterLingua™ Script).” Id. at 11:50–51. IS “is a small, but
powerful set of calculation, execution and conditional logic statements that
give application level functionality to a message,” including the ability to
load and store mapped field data defined by a message. Id. at 17:34–38.
Server SRV(L) “also comprises a database ILMDB (=InterLingua™
Message Database) for storing several tables.” Ex. 1006, 11:53–55. Certain
relational tables within the database ILMDB are “needed to define and
control a message either received or to be sent.” Id. at 14:3–5. Heijden
explains:
Preferably, the database of the communication apparatus
is organized in several tables to which reference is made from
the message definition table. Then, the predetermined message
definition table comprises a message system identifier for use
as a reference to further tables in the database.
One of such further tables may be a field definition table
for holding primary definitions for any field of the messages.
Preferably, one of such further tables is a field mapping
table comprising mapping information usable by predetermined
fields, e.g. for mappings to hyper text markup language fields,
database fields, flat file fields and other message fields, said
database fields and flat file fields being stored in a customer
database.
Id. at 8:36–48.
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Observations Regarding Coffee and Heijden
We offer the following observations on Petitioner’s challenge based
on Coffee and Heijden and Patent Owner’s Preliminary Response.
First, Petitioner’s proposed combination relies upon Heijden to
establish that it would have been obvious to include field-mapping
information with the received message data packet, the text message
response, and/or data to enable the vehicle operator to respond to text paging
messages, and to store all of which, at least temporarily, in the memory of
the MDT. See Pet. 62–63 (citations omitted). Although Petitioner includes
claims 7–9 in its challenge under this ground, claim 7 does not recite “field-
mapping information” or a memory for storing “field-mapping information.”
Thus, it is not clear precisely how Petitioner intends this combination to
apply to claims 7–9.
Second, Patent Owner raises several arguments in response to
Petitioner’s contention that one of ordinary skill in the art would have been
motivated to combine Coffee and Heijden. See, e.g., Prelim. Resp. 29–33.
On the present record and at this stage of the proceeding, Patent Owner’s
contention Coffee and Heijden present “two entirely different
communication systems” that may potentially have incompatibility issues if
combined appears to be a bodily incorporation argument, which is generally
not persuasive.
Third, Patent Owner raises several arguments directed to whether
Heijden discloses certain claim limitations that we determine (on the present
record) are taught by Coffee, e.g., “‘field-mapping’ that is ‘based on which
one of said pre-defined formatted messages was received.’” See, e.g.,
Prelim. Resp. 34. To the extent we find that Coffee teaches a particular
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claim limitation, Petitioner need not also demonstrate that Heijden discloses
the same.
VII. CONCLUSION
For the foregoing reasons, Petitioner has demonstrated a reasonable
likelihood that it would prevail in showing that at least one claim of the
’308 patent is unpatentable. Our analysis is based on the preliminary record
developed thus far and may change after the record is developed fully,
during trial.
VIII. ORDER
Accordingly, it is:
ORDERED that Petitioner’s Request for Rehearing (Paper 12) is
granted; and
FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), inter
partes review is instituted as to claims 1–4, 6–9, 11, 12, and 15 of the
’308 patent on all of the grounds set forth in the Petition; and
FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
37 C.F.R. § 42.4(b), inter partes review shall commence on the entry date of
this Decision, and notice is hereby given of the institution of a trial.
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For PETITIONER:

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

For PATENT OWNER:

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