UNITED STATES PATENT AND TRADEMARK OFFICE FedEx Corp., …

UNITED STATES PATENT AND TRADEMARK OFFICE

_________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________________

FedEx Corp.,

Petitioner

v.

Intellectual Ventures II LLC, Patent Owner

_________________________

U.S. Patent No. 6,633,900 _________________________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,633,900

U.S. Patent No. 6,633,900

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TABLE OF CONTENTS

TABLE OF CONTENTS .......................................................................................... ii

LIST OF EXHIBITS ................................................................................................ iv

TABLE OF AUTHORITIES ..................................................................................... v

I. Introduction ...................................................................................................... 1

II. Statement of Precise Relief Requested for Each Claim Challenged ............... 3

A. Claims for Which Review Is Requested ............................................... 3

B. Statutory Grounds.................................................................................. 3

III. ’900 Patent Overview ...................................................................................... 4

A. Summary ............................................................................................... 4

B. Prosecution History ............................................................................... 8

IV. The Level of Ordinary Skill in the Art ............................................................ 9

V. Claim Construction ........................................................................................10

VI. Ground 1: Storch and Butler Render Obvious Claim 1 Under 35 U.S.C. § 103 ...................................................................................................11

A. Overview of Storch .............................................................................11

B. Overview of Butler ..............................................................................14

C. Rationale to Combine Storch and Butler ............................................16

D. Storch and Butler Collectively Teach Every Element of Claim 1 ......18

VII. The Ground Presented in this Petition Is Not Redundant of the Ground Presented in IPR2017-00743 .........................................................................40

VIII. Mandatory Notices Under 37 C.F.R. § 42.8 ..................................................41

A. Real Party-in-Interest ..........................................................................41

B. Related Matters ....................................................................................41


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C. Lead and Backup Counsel ...................................................................42

D. Service Information .............................................................................43

IX. Grounds for Standing .....................................................................................43

X. Fee Payments .................................................................................................43

XI. Conclusion .....................................................................................................44


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LIST OF EXHIBITS

Exhibit 1001. U.S. Patent No. 6,633,900 to (“the ’900 patent”)

Exhibit 1002. U.S. Patent No. 5,920,846 to Storch (“Storch”)

Exhibit 1003. U.S. Patent No. 4,922,516 to Butler (“Butler”)

Exhibit 1004. Declaration of Tal Lavian, Ph.D.

Exhibit 1005. Prosecution History of U.S. Application No. 09/509,100

Exhibit 1006. Exhibit A to Plaintiff Intellectual Venture II LLC’s

Infringement Contentions, Intellectual Ventures II LLC v.

FedEx Corp., 2:16-cv-00980 (E.D. Tex., Jan. 17, 2017)

Exhibit 1007. Complaint for Patent Infringement, Intellectual Ventures II LLC

v. FedEx Corp., 2:16-cv-00980 (E.D. Tex., Aug. 31, 2016)

Exhibit 1008. U.S. Patent No. 6,748,318 to Jones (“Jones”)

Exhibit 1009. U.S. Patent No. 5,715,905 to Kaman (“Kaman”)

Exhibit 1010. U.S. Patent No. 5,623,260 to Jones


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TABLE OF AUTHORITIES

CASES

Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct. 2131 (2016) .......................................................................................10

Microsoft v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) ..........................................................................11

In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) ............................................................................10

STATUTES

35 U.S.C. § 102 ....................................................................................................3, 40

35 U.S.C. § 103 ................................................................................................ passim

35 U.S.C. § 311 ....................................................................................................3, 43

35 U.S.C. § 315 ........................................................................................................43

RULES/REGULATIONS

37 C.F.R. § 42.100(b) ..............................................................................................10

37 C.F.R. § 42.104 ............................................................................................ 11, 43

Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ..................................................................11


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Introduction I.

FedEx Corp. requests inter partes review of claim 1 of U.S. Patent No.

6,633,900 (“the ’900 patent”) (Ex. 1001.) The Board should institute review and

cancel claim 1 in view of the obviousness ground presented in this petition.

The ’900 patent discloses and claims a method for distributing work order

assignment data to a field crew. (Ex. 1001 at 2:20-24, 15:7-27.) The method of

claim 1 includes eight different steps (A-H), but each one was well known long

before the ’900 patent. (Ex. 1004 ¶¶ 6-7.) Steps A-B and E-H recite well-known

tasks performed in prior art dispatching process: (A) updating a database with a

new work assignment; (B) notifying a field crew of the assignment; (E) presenting

a list of assignments; (F, G) retrieving and displaying detailed data regarding an

assignment; (H) updating the detailed data based on field crew input. (Ex. 1004

¶ 7; Ex. 1001 at 15:11-27.) The ’900 patent admits that these type of dispatching

steps were performed in prior art systems. (Ex. 1001 at 1:18-51; Ex. 1004 ¶ 8.) The

remaining steps, C and D, add login functionality that merely verifies field crew

identity and notifies the field crew of a successful login. (Ex. 1001 at 15:11-27; Ex.

1004 ¶ 9.) Steps C and D are untethered to the remaining claim elements and recite

only basic functions of system access that were well known long before the ’900

patent. (Ex. 1004 ¶ 9.)


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The ’900 patent, however, purports to have improved the prior art

dispatching systems—which allegedly used voice, fax, or proprietary technology

for communication—by using TCP/IP. (Ex. 1001 at 1:52-2:38.) Of course, the

’900 patent inventors did not invent TCP/IP, (Ex. 1004 ¶ 10; Ex. 1001 at 4:52-55),

and applying these ubiquitous protocols to existing systems is not patent worthy.

Worse yet, claim 1 does not even mention a network, nor is it limited to TCP/IP.

(Ex. 1004 ¶ 11.) Instead, it is silent regarding any communication protocol and the

only components it recites are an “enterprise computing system,” a “mobile field

unit,” and a “database.” (Id.; Ex. 1001 at 15:7-11.) Moreover, the TCP/IP protocol

disclosed in the ’900 patent is simply one embodiment of the broader concept of a

“non-proprietary technolog[y]” that the ’900 patent contrasts with preexisting

“proprietary technology. (Ex. 1001 at 1:66-2:14-27.)

This petition presents a single obviousness ground based on two references

from the telecommunications industry, Storch and Butler. As Storch and Butler

demonstrate, technicians in this industry used mobile technician access units to

exchange information with enterprise-side dispatching systems to perform each

step of claim 1. (Ex. 1004 ¶¶ 12, 13.) Because the combination of Storch and

Butler renders obvious claim 1, Petitioner requests that the Board institute review

and cancel claim 1. (Id. ¶¶ 6-13, 51, 139-140.)


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Statement of Precise Relief Requested for Each Claim Challenged II.

Claims for Which Review Is Requested A.

Petitioner respectfully requests review under 35 U.S.C. § 311 of claim 1 of

the ’900 patent and cancellation of this claim as unpatentable.

Statutory Grounds B.

Claim 1 of the ’900 patent is unpatentable and should be cancelled in view

of the following grounds and prior art references.

Prior Art References

Ref. 1: Storch, U.S. Patent No. 5,920,846 (Ex. 1002); filed February 27,

1996; prior art under 35 U.S.C. § 102(e).

Ref. 2: Butler, U.S. Patent No. 4,922,516 (Ex. 1003); issued May 1, 1990;

prior art under 35 U.S.C. §102(b).

Ground Ground of Unpatentability

1 Storch and Butler render obvious claim 1 under 35 U.S.C. § 103.


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’900 Patent Overview III.

Summary A.

The ’900 patent describes a system and method for assigning and

communicating work orders to field crew personnel. (Ex. 1001 at 2:20-24; Ex.

1004 ¶ 37.) The disclosed systems and methods may be used by businesses such as

“utility companies,” which “deploy numerous employees over a wide geographic

area to service a dispersed infrastructure or client base.” (Ex. 1001 at 1:18-23.)

The disclosed system and method use both an enterprise computing system

and at least one mobile field unit. (Id. at 2:24-25; Ex. 1004 ¶ 38.) The enterprise

computing system is a dispatch system, assigning and communicating work order

assignments to field crew personnel “with minimum dispatcher/operator

interference.” (Ex. 1001 at 3:38-49.) The field crews use the mobile field unit—a

computing device such as a portable computer, a personal digital assistant (PDA),

or similar device—to receive the work order assignments, gather information about

the work order, and update the enterprise computing system regarding the status of

the work order. (Id. at 3:42-46, 4:13-16, 4:41-44.)

To communicate data between the field crews and the enterprise computing

system, the ’900 patent describes using standard networking components and

techniques that were widely available and well-known. (Ex. 1004 ¶ 39.) In

particular, the ’900 patent discloses using a wireless communication network that


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supports terminal control protocol/internet protocol (TCP/IP). (Ex. 1001 at 2:24-

27, 3:55-4:4, 4:23-30.) As shown in Fig. 1 (below), the enterprise computing

system 50 of the ’900 patent includes one or more servers 56, 60, 62, 64 or

workstations 66 connected over a LAN 68 to a database 58 and a TCP/IP gateway

70. (Id. at 3:55-4:4.) The mobile field unit 72 includes a wireless radio modem 74

and communicates with the enterprise computing system 50 over the wireless

communication network 54.

The ’900 patent discloses using this system to perform a method for

distributing work order assignments to field crews as shown in Fig. 5 (below). (Id.

at 8:66-9:19; Ex. 1004 ¶ 40.) The method includes updating a database on the

enterprise computing system to indicate an assignment has been assigned to a field


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crew, after which the field crew is notified. (Ex. 1001 at 8:66-9:19, steps 300, 302.)

In response to the field crew inputting login data, the method verifies the field crew

identity and notifies the field crew of a successful login. (Id., steps 304-308). The

method also presents a list of assignments to the field crew and retrieves detailed

assignment data in response to input by the field crew. (Id., steps 308-312.)

Finally, in response to the field crew identifying that an action was taken with

regard to the assignment, the database is updated. (Id., step 314.)


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Claim 1 of the ’900 patent is the only independent claim and recites a

method for distributing work order assignment data to the field crew. (Ex. 1001 at

15:7-27.) While the ’900 patent describes embodiments where the enterprise

computing system and mobile field unit communicate using a computer network

and TCP/IP, claim 1 is not so limited. (Ex. 1004 ¶ 41.) In fact, claim 1 does not at


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all limit the communications medium through which the claimed steps are

performed. (Id.) Claim 1 recites:

1. A method for distributing work order assignment data to a

field crew using a system having an enterprise computing system

and at least one mobile field unit, comprising the following steps:

(A) updating a database on the enterprise computing system to

indicate an assignment has been assigned to the field crew;

(B) notifying the field crew of the assignment;

(C) in response to the input of field crew login data, verifying

field crew identity;

(D) notifying the field crew of successful login;

(E) retrieving and presenting a list of assignments to the field

crew;

(F) in response to field crew input selecting an assignment

from the list of assignments, retrieving detailed assignment data for

the selected assignment;

(G) displaying the detailed assignment data to the field crew;

and

(H) in response to field crew input identifying an action was

taken with regard to the assignment, updating the detailed

assignment data.

(Ex. 1001 at 15:7-27.)

Prosecution History B.

The ’900 patent was filed on April 26, 2000 as U.S. Patent Application No.

09/509,100. (Ex. 1001, cover.) This application was a national stage entry from


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PCT Application No. PCT/US99/00497 filed on January 8, 1999. (Id.) The PCT

application claimed priority to U.S. Provisional Application No. 60/070,858 filed

on January 9, 1998. (Ex. 1005 at 96.) The ’900 patent, however, does not claim

priority back to the U.S. provisional application. (Ex. 1001 at 1:8-9.) Nonetheless,

for purposes of this proceeding only, and without waiving the ability to challenge

the priority date of the ’900 patent before this Office or in another forum,

Petitioner has assumed that the priority date of the ’900 patent is the January 9,

1998 provisional filing date.

The ’900 patent issued after a short prosecution. During the international

phase of the PCT application, the written search report identified only five prior art

references, none of which were sufficiently related (individually or in combination)

to form a prior art rejection of the claims. (Ex. 1005 at 99, 107.) Upon entry into

the U.S., the same examiner who issued the written search report handled the U.S.

prosecution. (See id. at 104, 193 (listing same examiner).) There, the Applicant

was only issued a restriction requirement, (id. at 193-201 (restriction

requirement)), and the case was allowed after election, (id. at 210-14 (notice of

allowability in response to election)).

The Level of Ordinary Skill in the Art IV.

Factors defining the level of ordinary skill in the art include: (1) the types of

problems encountered in the art; (2) the prior art solutions to those problems;


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(3) the rapidity with which innovations are made; (4) the sophistication of

technology; and (5) the educational level of active workers in the field. In re GPAC

Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).

Based on these factors, a person of ordinary skill at the time of the alleged

invention of the ’900 patent would have held at least a Bachelor’s Degree in

Electrical Engineering, Computer Engineering, Computer Science or the

equivalent. (Ex. 1004 ¶¶ 42-43.) One skilled in the art would also have had two or

more years of industry experience in the field of computer networking generally,

and wireless networking or mobile communications specifically, or the academic

equivalent thereof. (Ex. 1004 ¶¶ 44-49 (citing Ex. 1001 at 3:55-4:34, 4:47-5:10,

Figs. 1, 2).) Such a person would have been familiar with the components,

methods, and protocols used at the time of the alleged invention of the ’900 patent

to communicate between a mobile field unit and an enterprise computing system.

(Id.)

Claim Construction V.

A claim in an unexpired patent “shall be given its broadest reasonable

construction in light of the specification of the patent in which it appears.”

37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary

and customary meaning as would be understood by one of ordinary skill in the art

in the context of the specification. Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct.


–11–

2131, 2142 (2016). “The PTO should also consult the patent’s prosecution history

in [IPR] proceedings.” Microsoft v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.

Cir. 2015).

In this proceeding, Petitioner submits that the claim terms of the ’900 patent

should be given their broadest reasonable interpretation as understood by one of

ordinary skill in the art and consistent with the disclosure. 37 C.F.R.

§ 42.104(b)(3); Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764

(Aug. 14, 2012). (Ex. 1004 ¶ 50.)

Ground 1: Storch and Butler Render Obvious Claim 1 Under 35 VI.U.S.C. § 103

Overview of Storch A.

Storch discloses a system that processes service requests1 and dispatches

technicians for installing, maintaining, and repairing telecommunication networks.

(Ex. 1002, Abstract; Ex. 1004 ¶ 52.) Relevant to this proceeding, Storch’s system

includes a dispatching system, or “Work Force Administration Control/Dispatch

Out (WFA/DO) system” that dispatches technicians to customer premises based on

availability and sends service order assignments to those technicians over a

“technician access system (TAS).” (Ex. 1002 at 68:33-47, 71:28-37; Ex. 1004

1 Storch sometimes refers to “service requests” as “service orders” or “work

requests.” (See, e.g., Ex. 1002 at 45:48-54.)


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¶ 53.) The technician communicates with the WFA/DO dispatching system over

the technician access system using a “technician access unit (TAU),” which is a

“portable hand-held unit or handset . . . or a microcomputer or laptop

computer . . . .” (Ex. 1002 at 72:15-21, 74:27-37.) Figure 15 of Storch shows the

relationship between the WFA/DO dispatching system, the TAS network, the TAU

device, and the outside technician.

(Id., Fig. 15 (annotated); see also id., Fig. 9; Ex. 1004 ¶ 54.)

Storch explains that the TAU device communicates with the technician

access system TAS using dual tone multifrequency signaling (DTMF). (Ex. 1002

at 72:14-23.) One skilled in the art would have understood from this disclosure that


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the TAU device could communicate with the technician access system TAS and

the WFA/DO dispatching system by physically connecting the TAU device to the

telephone line while in the field. (Ex. 1004 ¶ 55.) Before the proliferation of

cellular and other wireless networks, this landline-based system of Storch provided

for efficient dispatching of available technicians “to the customer premise at or

before the assigned appointment time to install or repair outside facilities.” (Ex.

1002, Abstract; Ex. 1004 ¶ 55.)

Storch includes several examples describing how the TAU device and

WFA/DO dispatching system communicate with each other to distribute service

orders to the technician, provide the technician with additional information related

to the service orders, and enable the technician to send data to update the service

orders based on tasks performed at the customer site. (Ex. 1004 ¶ 56.) In one

example, Storch explains that when the WFA/DO dispatching system is updated to

include a new service order, the WFA/DO dispatching system determines which

technician will work on the service order. (Ex. 1002 at 70:40-58, 71:28-43; Ex.

1004 ¶ 57.) The WFA/DO dispatching system then transmits a copy of the service

order to the technician’s TAU to notify the technician of the assignment, and

updates its own database to indicate that the job has been dispatched. (Ex. 1002 at

71:44-49; Ex. 1004 ¶ 57.) The technician can log in to the TAU and use the TAU

to exchange data with the dispatching system. (Ex. 1002 at 71:31-35, 72:24-30; Ex.


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1004 ¶ 58.) For example, the technician can use the TAU to request a service

order, and obtain information about a particular service order to facilitate

performing the tasks associated with the service order while at the customer

location. (Ex. 1002 at 71:50-60, 72:24-32.) When the technician completes the

required tasks, he can again log into the TAU device and send data to the

WFA/DO dispatching system to indicate what was performed at the customer

location and whether additional work needs to be performed. (Ex. 1002 at 74:9-23;

Ex. 1004 ¶ 59.) The WFA/DO dispatching system then processes this received data

and updates the electronic database including the service order to indicate that the

service order was completed. (Ex. 1002 at 74:23-26.)

Overview of Butler B.

Butler discloses a portable, hand-held craft technician’s field terminal that a

technician uses to communicate with a central technician access network. (Ex.

1003, Abstract; Ex. 1004 ¶ 60.) Butler explains that a technician may connect the

field terminal to the telephone network in order to communicate with the central

technician access network while in the field. (Ex. 1003 at 3:4-15.) For example, the

technician can use the field terminal to “(1) process requests for new work; (2)

process requests for circuit tests via mechanized loop test systems; and (3) to clear

and close out completed work orders with the operating system central.” (Id. at

3:15-19.) This makes it possible for a technician to “perform a number of field


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functions without the aid of a maintenance administrator.” (Id. at 3:13-15; Ex.

1004 ¶ 61.) Like Storch, Butler’s field terminal can communicate with the

technician access system using DTMF. (Ex. 1003 at 1:66-2:10; Ex. 1004 ¶ 61.)

Fig. 2A (below) shows an embodiment of the field terminal of Butler. The

field terminal is a “miniature computer” with a display, push button inputs

including a keypad, a modem, and a dual tone encoder/decoder. (Ex. 1003 at 3:56-

4:23; Ex. 1004 ¶ 62.) Butler discloses that the field terminal may be enclosed in a

“rectangular case” that is “pocket-sized and adapted for hand-held operation.” (Ex.

1003 at 4:10-12.) In addition, RJ-11 connector plugs allow for connection to a

telephone line. (Id. at 4:12-14.)

To access the technician access network, Butler discloses that the technician

must enter login credentials after connecting the field terminal to a telephone line.

Butler states that the technician must “enter the log-on and required password to

gain access to the technician's access system or network.” (Id. at 7:6-11, 8:49-59;


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Ex. 1004 ¶ 63.) This data is entered using the push button inputs on keypad 48.

(Ex. 1003 at 8:49-59.)

Rationale to Combine Storch and Butler C.

A skilled artisan would have been motivated to combine Storch and Butler,

which include similar disclosures and are both directed to the same problem of

using hand-held mobile devices to assist technicians while in the field. (Ex. 1004

¶¶ 64-71.) More specifically, both Storch and Butler relate to distributing work

order assignments to technicians over a telephone line network in the wired

telecommunications service industry. (Ex. 1004 ¶¶ 64-66.) Storch teaches a method

of distributing work order assignments via a mobile device using an enterprise

computing system and a network. See supra Section VI.A. Butler teaches a similar

mobile device as contemplated by Storch and for the same purpose (e.g., receiving

work order assignments). See supra Section VI.B. (Ex. 1004 ¶ 67.)

The technician access system (TAS) in Storch is likely the same

contemplated system, or at least a very similar system, as the technician access

network (TAN) in Butler. (Ex. 1004 ¶¶ 68-69.) Storch explains that such systems

were well known and commercially available. (Ex. 1004 ¶ 68 (citing Ex. 1002 at

71:60-65 (stating that “[e]xamples of TASs . . . include a Technician Access Unit

(TAN) sold by Bellcore”), 71:60-61 (listing “TASs known in the art”).) Similarly,

Butler explains that technician access networks and technician access systems were


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well known in the art. (Ex. 1004 ¶ 69; Ex. 1003 at 3:4-19; see also id. at 1:62-2:38

(referencing “any of several centralized technician access systems,” and “present

technician access systems”).)

The technician-side devices are also similar across both references. (Ex.

1004 ¶ 67.) For example, Storch explains that in one embodiment, the TAU may be

a “Craft-Access unit,” (Ex. 1002 at 72:21-22), while Butler describes the field

terminal as a “craft terminal unit,” (Ex. 1003 at 2:45-63.) And as discussed above,

both Storch’s TAU and Butler’s field terminal communicate using DTMF

signaling over existing telephone lines. See supra Sections VI.A, VI.B.

One skilled in the art would have found it obvious and would have been

motivated to combine Storch and Butler because they are drawn to solving the

same problems, have overlapping teachings, and use similar system-side and

technician-side components. (Ex. 1004 ¶¶ 70, 139, 140.) Moreover, because Storch

discloses the system from a system level perspective, and Butler discloses its

system by focusing on additional implementation details of the technician’s

terminal, one skilled in the art would have been motivated to look toward Butler

when modifying the TAU device disclosed in Storch. (Id. ¶ 71, 140.)


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Storch and Butler Collectively Teach Every Element of Claim 1 D.

“A method for distributing work order assignment data to a i.field crew”

Storch and Butler teach a method for distributing work order assignment

data to a field crew. (Ex. 1004 ¶¶ 72-78.) As discussed above, Storch discloses a

method for processing and distributing service orders (also referred to as service

requests) for installation, maintenance, or repair of a telecommunications system.

(Ex. 1002 at Abstract, 6:65-7:40.) When Storch’s system assigns a technician to a

particular job, the WFA/DO dispatching system distributes a copy of the service

order to the technician access unit. (Id. at 71:44-49, 72:24-32.)

One skilled in the art would have understood the data contained in Storch’s

service order to be “work order assignment data.” (Ex. 1004 ¶¶ 73-76.) Storch

describes the service order as “computer information that contains data” and is

“used to convey information and data to various telecommunications company

personnel including technicians and specialists so they can perform necessary

manual and record work to complete the installation of the requested service.” (Ex.

1002 at 53:19-28.) Storch also provides examples of the data included in the

service order, such as appointment dates and locations, information regarding

installation instructions, and assignment information. (Ex. 1002 at 53:29-52; Ex.

1004 ¶ 74.) In fact, not only does Storch’s description of a service order match that

of the ’900 patent’s work order, Storch actually provides more detail about the


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contents of its service order than the general description provided by the ’900

patent. (Ex. 1001 at 3:38-39 (describing a work order as “any type of description of

a particular task”); Ex. 1004 ¶ 75.) Thus, one skilled in the art would understand

Storch’s disclosed methods for distributing service orders to technicians to teach a

method of “distributing work order assignment data to a field crew.” (Ex. 1004

¶ 76.)

Butler teaches a method of distributing work order assignment data to a field

crew similar to Storch’s disclosure, and teaches that its field terminal may be used

in implementing such a method. (Id. ¶¶ 77-78.) For example, Butler explains that a

technician may use the field terminal to request and receive work data and then

display the work data on the terminal display. (Ex. 1003 at 2:3-5.) Moreover,

Butler’s terminal may include a modem for downloading “work orders” (id. at

3:45-46), and may include a memory to store work orders and “different job

related data passages” for a “full day[’]s work,” (id. at 7:2-5).

In one example, Butler explains that the terminal may display to the

technician the phone number, address, customer name, and description of the

problem/complaint for a particular service order. (Id. at 8:60-66.) One skilled in the

art would similarly have understood this type of data provided to the technician to

inform the technician about the particulars of a work order assigned to him to be

“work order assignment data.” (Ex. 1004 ¶ 78.)


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“using a system having an enterprise computing system and ii.at least one mobile field unit, comprising the following steps”

Storch and Butler collectively teach using a system having an enterprise

computing system and at least one mobile field unit. (Ex. 1004 ¶¶ 79-86.) As

shown in Fig. 9 (below), Storch discloses a system 200 that is a “computer network

. . . including a plurality of computer systems . . . which are designated by

rectangular blocks.” (Ex. 1002 at 52:16-31; Ex. 1004 ¶ 79.) These computer

systems include, among others, the Due Date Availability System (DUDAS) 266,

the Work Force Administration Control/Dispatch Out system (WFA/DO) 270, the

technician access system (TAS) 276, and the technician access unit (TAU) 278.

(Ex. 1002 at 68:33-47; 71:44-72:13.)


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(Ex. 1002, Fig. 9 (annotated); Ex. 1004 ¶ 79.)

DUDAS is a “dynamic, on-line, real-time, computer data processing system

used to manage the appointment dates and times.” (Ex. 1002 at 55:4-8.) DUDAS

receives information from the WFA/DO dispatching system for each service order


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and processes the information to maintain up-to-date records regarding the

availability of qualified technicians. (Id. at 55:39-50; Ex. 1004 ¶ 80.) The

WFA/DO dispatching system is a “computer data processing system that sorts,

manipulates, processes, stores, inputs, outputs, and controls data relating to the

work load and dispatching of outside technicians.” (Ex. 1002 at 68:33-47.) TAS is

a “computer data processing system that is designed to assist the outside technician

by performing functions such as transferring information and data between

WFA/DO 270 and the outside technician 244 to obtain new or current job

information from WFA/DO, return jobs, or close out jobs.” (Id. at 71:50-55.) Thus,

TAS provides the technician with access to the WFA/DO dispatching system. (Id.

at 71:28-37; Ex. 1004 ¶ 80.)

One skilled in the art would have understood that components included in

system 200, including DUDAS, WFA/DO, and TAS, make up an enterprise

computing system as understood in the context of the ’900 patent. (Ex. 1004 ¶ 81.)

The ’900 patent explains that enterprise computing system may include one or

more servers or workstations connected in a computer network to field requests

and provide data regarding work orders. (Ex. 1001 at 3:55-67.) This matches

Storch’s disclosure (described above) of the components in system 200 being a

computer network connecting a plurality of computer systems. (Ex. 1002 at 52:16-

31; Ex. 1004 ¶ 81.)


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Storch also explains that the outside technician 244 uses a technician access

unit (TAU) 278 to communicate with WFA/DO through TAS. (Ex. 1002 at 72:15-

21; Ex. 1004 ¶ 82.) The TAU can be a portable hand-held unit, a microcomputer,

or a laptop computer. (Ex. 1002 at 72:14-23.) Thus, one skilled in the art would

have understood Storch’s TAU to be a mobile field unit within the context of the

’900 patent. (Ex. 1004 ¶ 82.) For example, the ’900 patent describes the mobile

field unit as being a “portable computer, a personal digital assistant (PDA), or

similar device.” (Ex. 1001 at 4:13-16.)

In view of the above, one skilled in the art would have understood that the

methods disclosed in Storch are performed using a system (system 200) including

an enterprise computing system (including, for example, DUDAS 266, WFA/DO

270, and TAS 276) and a mobile unit (TAU 278). (Ex. 1004 ¶ 83.)

Butler also provides visual depictions of a “craft technician terminal” that

allows for “voice and/or data communication with any of several centralized

technician access systems,” and also “displaying data to the craft technician.” (Ex.

1003 at 1:62-66; Ex. 1004 ¶ 84.) The terminal, an example of which is shown in

Fig. 2A reproduced below, is “pocket-sized and adapted for hand-held operation,”

and may be “battery-powered and micro-processor controlled.” (Ex. 1003 at 4:10-

12; 9:51-57.)


–24–

Likewise, Butler discloses that the technician can connect[ the terminal] to

any subscriber telephone line” to communicate with a “central computer” and

download information from a “TAN” (technician access network). (Id. at 6:63-

7:13; Ex. 1004 ¶ 85.)

For the reasons discussed above in Section VI.C, and particularly because

Butler discloses additional implementation details regarding the technician’s

terminal, one skilled in the art would have been motivated to look toward Butler

when modifying the technician’s TAU device in Storch. (Ex. 1004 ¶ 86.)


–25–

“(A) updating a database on the enterprise computing iii.system to indicate an assignment has been assigned to the field crew”

Storch teaches this feature. (Ex. 1004 ¶¶ 87-96.) Storch states that when the

“WFA/DO transmits a copy of the service order to [the] technician via the

technician access unit (TAU) 278 and [the technician access] system

(TAS) 276 . . . WFA/DO then changes the status of the job from ‘pending load’ or

‘pending dispatch’ to ‘dispatched.’” (Ex. 1002 at 71:44-49.)

One skilled in the art would have found it obvious, based on Storch’s

disclosure, to implement Storch’s “chang[ing] the status of the job” to

“dispatched,” as updating a database to indicate an assignment has been assigned

to the field crew. (Ex. 1004 ¶¶ 88-89.) For example, Storch discloses that the

WFA/DO system “is a computer data processing system that sorts, manipulates,

processes, stores, inputs, outputs, and controls data relating to the work load and

dispatching of outside technicians . . . .” (Ex. 1002 at 68:36-40 (emphasis added).)

Similarly, Storch discloses that incoming service orders are “logged and statused

with a code . . . .” (Id. at 68:43-44.) And, Storch discloses that the data in the

WFA/DO system can be “querie[d]” to determine which service orders have a

particular status code. (Id. at 58:65-67.) One skilled in the art would have

understood from Storch’s disclosures that the WFA/DO stores service orders with

accompanying status codes, and would have recognized that one of the most


–26–

common and obvious ways to do so would have been to store the service orders in

a database. (Ex. 1004 ¶ 89.)

It was well known at the time of the ’900 patent to store information,

including service orders, in databases, as Storch makes clear. (Id. ¶¶ 90-91.) For

example, Storch discloses that another system in the prior art, Service Order

Processor (SOP) 71, “generates a service order that is stored in its associated

database.” (Ex. 1002 at 18:50-51.) Similarly, Storch discloses other systems within

system 200 that store data in databases, including PREMIS 256 (Id. at 54:5-11),

BOSS (id. at 59:22-34), and SORD (id. at 60:49-65). Thus, one skilled in the art

would have understood from Storch’s description of these systems that it was well

known that service orders could be stored in associated databases. (Ex. 1004 ¶ 90.)

And one skilled in the art would have found it obvious to store the service orders

and associated status in a database of the WFA/DO because doing so would have

required nothing more than implementing a well-known method (storing and

managing service orders) using a well-known technique (database management).

(Id. ¶ 91.) Thus, when Storch discloses “chang[ing] the status of the job” to

“dispatched,” one skilled in the art would have found it obvious to implement this

change by updating the WFA/DO database to indicate an assignment has been

assigned to the field crew. (Id. ¶¶ 90-91.)


–27–

To the extent it is argued that further disclosure is required, Storch teaches

that other databases within the enterprise computing system are updated when a

service order is dispatched. (Id. ¶¶ 92-94.) When assigning a technician to a

particular service order, Storch uses “Due Date Availability System (DUDAS)

266,” which is a “dynamic, on-line, real-time, computer data processing system

used to manage the appointment dates and times.” (Ex. 1002 at 55:6-9; see also

Fig. 9.) Storch states that “DUDAS 266 has information tables stored in its

computer memory that maintain current records indicating the amount of time in

relationship to the number of outside technicians 244 available to work on a

particular date and time for each geographic area . . . [and] can be used to schedule

appointments for both installation and repair requests.” (Id. at 55:27-33 (emphasis

added).) Storch also discloses that DUDAS receives information from WFA/DO

regarding the amount of time required to complete each service order for each day,

and processes this information to maintain up-to-date schedules with the

availability of the technicians. (Id. at 55:39-50; Ex. 1004 ¶ 93.) One skilled in the

art would have understood that to maintain up-to-date schedules for each

technician, DUDAS would be required to update its “information tables” to block

off a particular time when the service order was scheduled. (Ex. 1004 ¶ 94.) Thus,

Storch teaches updating the information tables to indicate a field crew technician

has been assigned to a given service order.


–28–

One skilled in the art would understand the “information tables” stored in

the computer memory of DUDAS to be a “database.” (Id. ¶ 95 (citing Ex. 1001 at

6:30-31).) To the extent there is any difference between information tables and a

database, it would have been obvious to one skilled in the art to store this

information in a database because doing so would be a simple substitution of one

well-known element (a database) for another (an information table). (Id. ¶ 96.)

“(B) notifying the field crew of the assignment” iv.

Storch and Butler disclose this feature. (Ex. 1004 ¶¶ 97-100.) Storch states

that “[w]hen WFA/DO 270 determines the best job match for the technician,

WFA/DO transmits a copy of the service order to technician via the technician

access unit (TAU) 278 and [technician access] system (TAS) 276.” (Ex. 1002 at

71:44-49.) The technician in Storch is selected based on several factors, including

the type of service order, the technician’s capabilities, and the geographic location

of the work site. (Id. at 26:1-26.) The service order includes information necessary

to locate a customer’s premises and information about the work required. (Id. at

72:24-32.) One skilled in the art would consider the WFA/DO selecting the

technician for a service order and transmitting a copy of a service order to a

technician to be notifying the technician of an assignment. (Ex. 1004 ¶¶ 97-98.)

Butler similarly discloses transmitting “[j]ob data” to the technician’s field

terminal, including enough data for a “full days technician work.” (Ex. 1003 at


–29–

Abstract; see also id. at 2:3-16.) Butler provides an example of a message

including such job data, which includes information about an assignment: “555-

1212/no dial tone/1234 Country Lange/Trent, Robert.” (Id. at 8:60-66.) This data

provides the technician with a customer telephone number, failure complaint,

customer name, and customer address. (Id.; Ex. 1004 ¶ 99.) One skilled in the art

would have understood that providing this data to the technician via field terminal

would notify the technician of an assignment. (Ex. 1004 ¶ 99.)

It would have been obvious to one skilled in the art to incorporate Butler’s

notification of an assignment using a short message into Storch’s system. (Id.

¶ 100.) While Storch notifies a technician of an assignment by sending a service

order, Butler’s example message shown above allows the system to notify the

technician of the new assignment in a more efficient manner. (Id. ¶ 100.) One

skilled in the art therefore would have been motivated to incorporate Butler’s

simple notification message into Storch in order to be able to notify a technician of

a new assignment efficiently by reducing the amount of data needed to be

transferred. (Id. ¶ 100.)

“(C) in response to the input of field crew login data, v.verifying field crew identity”

Storch and Butler teach this feature. (Ex. 1004 ¶¶ 101-105.) To retrieve

service orders in Storch, the technician accesses the WFA/DO dispatching system

after logging onto the technician access system by using the TAU device. (Ex.


–30–

1002 at 26:60-63, 72:24-27.) In doing so, Storch states that “the technician inputs

an employee code which is used by WFA/DO to identify the technician requesting

a job.” (Id. at 71:28-36.) One skilled in the art would have understood identifying

the technician using the technician’s entry of an employee code to be “verifying

field crew identity” “in response to the input of field crew login data.” (Ex. 1004

¶ 101.)

To the extent it is argued that further disclosure is required, Butler discloses

using the field terminal to “enter the log-on and required password to gain access

to the technician's access system or network.” (Ex. 1003 at 7:6-11.) Butler further

states that after the technician connects the field terminal to a phone line to access

the technician access network, it “answers, [and] the operator then enters the log-

on digits and the password digits by means of the DTMF keypad 48.” (Id. at 8:55-

59.) The technician can then download work orders. (Id.) One skilled in the art

would have understood Butler’s entry of a log-on and password to be “field crew

login data” and would have understood that by providing access to the system,

Butler’s system uses that login data to verify field crew identity. (Ex. 1004 ¶¶ 102-

103.) Moreover, one skilled in the art would have been motivated to include

Butler’s requirement of a “log-on” and “password” in place of Storch’s “employee

code” in order to improve security surrounding the system by requiring two pieces

of identifying information. (Id. ¶¶ 103-104.)


–31–

The combination of Storch and Butler therefore teaches verifying field crew

identity in response to the input field crew login data. (Ex. 1004 ¶¶ 101-105.) For

example, in such a combination, when the technician in Storch inputs the log-on

and password taught by Butler, Storch’s WFA/DO dispatching system uses the

information “to identify the technician requesting a job,” (Ex. 1002 at 71:28-36) as

taught by Storch. (Ex. 1004 ¶ 105.)

“(D) notifying the field crew of successful login” vi.

Storch and Butler teach this feature. (Ex. 1004 ¶¶ 106-113.) Storch discloses

notifying field crew technicians of a successful login by displaying the service

order to the technician after input of his or her employee code into the technician

access unit. (Ex. 1002 at 71:44-49; Ex. 1004 ¶ 106.) In particular, Storch states that

after identifying the technician, the WFA/DO 270 “transmits a copy of the service

order to [the] technician via the technician access unit (TAU) 278.” (Ex. 1002 at

71:44-49.) One skilled in the art would consider granting access to the technician

access system and displaying the service order after input of an employee code to

be an indication of a successful login. (Ex. 1004 ¶ 107.)

Butler also teaches this feature. (Id. ¶ 111.) Butler states that “[a]fter the log-

on procedure the technician selects the type of transaction desired from a menu

transmitted by the central computer [(e.g., to download work orders)]. The terminal

40 receives download of data . . . displayed on LCD 24 [of the field terminal].”


–32–

(Ex. 1003 at 7:11-16.) The data is received upon “entering the appropriate

command sequence,” after which a “downloaded message will appear on the LCD

24.” (Id.) The downloaded message includes work orders. (Id. at 8:60-66.)

Allowing the technician who has entered login data to access the system

constitutes “notifying the field crew of a successful login,” within the context of

claim 1 of the ’900 patent. (Ex. 1004 ¶¶ 107-108.) Patent Owner agrees because it

has asserted that FedEx practices this limitation under a narrower claim

construction standard by simply granting access to the system: “FedEx notifies the

field crew of a successful login by allowing the field crew to access functions on

the PowerPad and/or MC9500 device.” (Ex. 1006 at 10-11; Ex. 1004 ¶¶ 109-110.)

To the extent Patent Owner contradicts its own contentions and argues that

Storch’s and Butler’s granting of access does not disclose notifying the field crew

of a successful login, it would have been obvious to one skilled in the art to display

a visual notification of a successful login. (Ex. 1004 ¶ 112-113.) For example, it

would have been obvious to include on the technician access unit of Storch or the

field terminal of Butler a notification message that says “Welcome [Employee

Name].” (Id. ¶ 112.) Butler explicitly states that “messages” containing job data are

downloaded after the log-in procedure. (Ex. 1003 at 8:55-59.) Therefore it would

be obvious to use this well-known messaging functionality disclosed in Butler to

display a notification of successful login in an initial welcome message to the


–33–

technician. (Ex. 1004 ¶¶ 112-113.) By displaying the technician’s name in the

welcome message, the technician could confirm that the system recognized him or

her. (Id. ¶ 113.) Such notifications were commonplace and well known at the time

of the ’900 patent. (Id.)

“(E) retrieving and presenting a list of assignments to the vii.field crew”

Storch and Butler teach this feature. (Ex. 1004 ¶¶ 114-120.) Storch discloses

using the WFA/DO dispatching system to transmit service orders using the

technician access system. (Ex. 1002 at 71:45-48.) The technician access system

allows a technician to “obtain new or current job information from [the] WFA/DO,

return jobs, or close out jobs.” (Id. at 71:50-55.) To the extent that Storch does not

explicitly disclose retrieving and presenting a “list of assignments,” it would have

been obvious to modify Storch to do so. (Ex. 1004 ¶¶ 114-115.) For example, it

would have been obvious to one skilled in the art to display a list of the

technician’s assignments on the TAU device so that the technician could review

his or her assignments for an entire day. (Id. ¶ 115.) This would be consistent with

Storch’s purpose of dispatching technicians to various facilities. (Id. ¶ 115.)

In any event, this feature would also have been obvious over Storch in view

of Butler. (Ex. 1004 ¶¶ 116-120.) Butler discloses using the field terminal to

retrieve one or more “job related data passages” containing a work order. (Ex.

1003 at 7:2-5.) Each job related data passage is contained within a “message,” and


–34–

the field terminal of Butler can be used to display a list of messages on its display.

(Id. at 7:20-24, 7:34-39, 9:5-10.) Butler further discloses that the technician’s

mobile terminal can store “a number of different job related data passages, i.e.,

easily enough storage capacity to contain a normal full day[’]s work.” (Id. at 7:2-5,

Abstract.)

To view the job data messages, Butler states that the technician can use the

mobile terminal to scroll through a

list of messages using the field

terminal. (Id. at 9:3-7.) As shown

in Fig. 2A (right), the terminal (40)

includes an LCD screen (24) and

scroll buttons (14), (16) for

scrolling through a list of job related messages. Therefore, Butler discloses

retrieving and presenting a list of assignments to a field crew. (Ex. 1004 ¶ 118.)

It would have been obvious to one skilled in the art to incorporate the

features of Butler’s scrollable display and its ability to receive a list of assignments

with the technician access unit of Storch for the purpose of retrieving and

presenting a list of assignments to the technician. (Id. ¶ 119.) As discussed above,

Butler discloses downloading one or more messages, scrolling through those

messages, and providing a field terminal with sufficient capacity to store a full


–35–

day’s work. (Id. ¶ 119.) Therefore, it would have been obvious to combine the

teachings of Storch and Butler to retrieve and present a list of assignments to a

technician field crew. (Id.¶ 120.) Doing so would have been nothing more than

applying a known technique (Butler’s ability to store multiple assignments and

include a scrollable display to view each one) to a known device (the technician

access unit of Storch or the terminal of Butler) to yield the predictable and desired

result of providing a technician with a list of all assignments for a particular day.

(Id.)

“(F) in response to field crew input selecting an assignment viii.from the list of assignments, retrieving detailed assignment data for the selected assignment”

The combination of Storch and Butler teaches this feature. (Ex. 1004 ¶¶ 121-

126.) Storch discloses that after a technician logs into the system, the technician

“requests a new job or information on an existing job.” (Ex. 1002 at 72:24-27.) In

response to this request, the WFA/DO dispatching system “transmits a copy of the

service order to the [technician access unit],” and “[a] copy of the service order

appears on the screen of the [technician access unit] for the selected technician.”

(Id. at 72:26-30.) The service order is detailed assignment data because it “contains

data essential to establishing, updating, maintaining, billing and disconnecting all

customer service offerings” and “convey[s] information and data to various

telecommunications company personnel . . . so they can perform necessary manual


–36–

and record work to complete the installation of the requested service.” (Id. at

53:19-28; Ex. 1004 ¶ 121.) One skilled in the art would have understood providing

the service order in response to a request for information about an existing job to

be retrieving detailed assignment data for the selected assignment in response to

field crew input. (Ex. 1004 ¶¶ 121-122.)

Storch does not explicitly disclose a technician “selecting an assignment

from [a] list of assignments.” However, the combination of Storch and Butler

renders this feature obvious. (Ex. 1004 ¶¶ 123-126.) Butler discloses receiving job

data in the form of messages, and scrolling through the messages. (Ex. 1003 at 7:2-

5, 7:34-39, 8:60-66.) In addition, Butler discloses “scrolling the display [of the

field terminal] either up or down to review previous messages” and a “View

Messages” function that is used to scroll through and view a message from a list.

(Id. at 7:34-36, 10:65-11:15, 14:7-14.) Butler therefore discloses receiving multiple

job data messages (e.g., assignments), scrolling through a list of assignments, and

selecting a particular message to retrieve additional details. (Ex. 1004 ¶ 124.)

It would have been obvious to one skilled in the art to combine the ability to

receive and scroll through several job data messages as in Butler with the ability to

retrieve detailed assignment data (e.g., service order details) of Storch for the

purposes of allowing a technician obtain more information about an assignment

from a list of several. (Id. ¶ 125.) Doing so would have been obvious because it


–37–

would have facilitated the organization of a technician’s day and provide him with

the information needed to complete a particular service order. (Id. ¶ 126.)

“(G) displaying the detailed assignment data to the field ix.crew, and”

The combination of Storch and Butler teaches this feature. (Ex. 1004 ¶¶ 127-

135.) As discussed, Storch’s service order constitutes detailed assignment data

because it “contains data essential to establishing, updating, maintaining, billing

and disconnecting all customer service offerings” and “convey[s] information and

data to various telecommunications company personnel . . . so they can perform

necessary manual and record work to complete the installation of the requested

service.” (Ex. 1002 at 53:19-28.) Storch discloses displaying the detailed

assignment data associated with a service order after the WFA/DO transmits a

copy to the technician access unit: “[a] copy of the service order appears on the

screen of the TAU 278 for the selected technician 244.” (Id. at 72:28-32.) This

allows the technician to travel to the customer premise and perform the tasks

required to complete the service order. (Id.) Storch therefore discloses displaying

detailed assignment data to the field crew. (Ex. 1004 ¶¶ 128-129.)

Butler discloses displaying both a list of job data messages (e.g.,

assignments) that can be scrolled through, and displaying detailed information

about the job data. (Ex. 1003 at 7:20-24, 13:54-57, 14:7-17.) Butler also discloses

that the LCD display of its field terminal has a display area of at least four lines,


–38–

allowing job data messages to be viewed and scrolled through using the scroll

buttons. (Id. at 7:30-39.) The inputs on the field terminal allow the technician to

scroll through, select, and display particular messages. (Id. at 7:34-39, 13:54-57;

see also id. at 14:7-17 (stating that “[t]o view messages . . . the operator may call

up on menu the VIEW MESSAGE function”); Ex. 1004 ¶¶ 131-132.))

Although Storch does not explicitly disclose displaying detailed assignment

data after selecting one assignment from a list of assignments, this is not a

requirement of claim 1. Nonetheless, it would be obvious to combine the teachings

of Storch and Butler to do so. (Ex. 1004 ¶¶ 132-135.) As discussed in the

preceding paragraphs, Storch discloses displaying a service order on the screen of

its technician access unit, while Butler discloses scrolling through and selecting

from a list of job data messages using its field terminal. Both receive detailed

assignment data from a remote system, allowing a technician and dispatch to

manage a technician’s work schedule and provide the technician with sufficient

details to complete an assignment. (Id. ¶ 133.) One skilled in the art would have

been motivated and would have found it obvious to combine Storch and Butler to

display both a list of assignments and detailed assignment data for an item on the

list, in response to the selection of that item. (Id. ¶¶ 134, 125-126.) Doing so would

have been obvious because it would have facilitated the organization of a


–39–

technician’s day and provide him with the information needed to complete a

particular service order. (Id. ¶ 135.)

“(H) in response to field crew input identifying an action x.was taken with regard to the assignment, updating the detailed assignment data”

Storch discloses this feature. (Ex. 1004 ¶¶ 136-138.) Storch states that

“[w]hen the technician 244 completes the tasks at the customer premise 212, the

technician logs into the TAS 276 via the portable TAU 278, and inputs completion

information . . . .” (Ex. 1002 at 74:9-12.) This completion information includes

whether certain tasks were performed or materials were needed, as well as the time

required to perform the work. (Id. at 74:12-17; Ex. 1004 ¶ 136.) After entering the

completion information, Storch’s system completes the service order stored in the

WFA/DO dispatching system. (Ex. 1002 at 74:23-26, 74:33-35, 74:47-50; (Ex.

1004 ¶ 136.) Storch also describes a prior art system where the “outside technician

changes the status . . . from dispatched to completed, and provides necessary

information regarding what was done to correct the problem” to the WFA/DO.

(Ex. 1002 at 42:55-62.) Thus, one skilled in the art would have understood

Storch’s technician entering completion information to be “field crew input

identifying an action was taken with regard to the assignment,” and would have

understood that in response to this input, Storch’s system updates the “detailed


–40–

assignment data” (the service order) to indicate that it was completed. (Ex. 1004

¶¶ 136-137.)

The Ground Presented in this Petition Is Not Redundant of the Ground VII.Presented in IPR2017-00743

On the same day that it filed the present petition, Petitioner filed a petition

against the ’900 patent showing that claim 1 would have been obvious over another

set of prior art references, Jones (Ex. 1008) and Kaman (Ex. 1009). See IPR2017-

00743. Petitioner requests that the Board consider and institute inter partes review

proceedings based on both petitions.

The ground presented in this petition is not redundant of the ground

presented in IPR2017-00743. First, for example, the ground in each petition is

based on a different primary prior art reference that qualifies as prior art under 35

U.S.C. § 102(e). Second, Storch, the primary reference in this petition, has a filing

date that is over one year prior to Jones, the primary reference in the other petition.

And Jones’s filing date of May 6, 19972 is only months before the provisional

application related to the ’900 patent. Thus, if Patent Owner introduces evidence

2 On its face, Jones purports to be a “continuation” of the application now

issued as U.S. Patent No. 5,623,260. (Ex. 1008, cover.) Jones, however, does not

share the same specification as the ’260 patent. (Ex. 1010.) Thus, Jones’s § 102(e)

date appears to be its May 6, 1997 filing date.


–41–

attempting to swear behind a § 102(e) date, the ground presented in this petition is

stronger than the ground in the other petition, due to Storch’s earlier filing date.

On the other hand, and again simply as an example, the ground presented in

IPR2017-00743 based on Jones and Kaman arguably more closely tracks Patent

Owner’s infringement contentions recently served against Petitioner in the Eastern

District of Texas. That petition draws several comparisons between Patent Owner’s

infringement positions in the contentions and the invalidity positions in the

petition. In this sense, the petition in IPR2017-00743 is stronger because it closely

tracks Patent Owner’s positions regarding claim 1.

Mandatory Notices Under 37 C.F.R. § 42.8 VIII.

Real Party-in-Interest A.

FedEx Corp., FedEx Corporate Services, Inc., Federal Express Corp., FedEx

Ground Package System, Inc., FedEx Freight, Inc., FedEx Custom Critical Inc.,

FedEx Office and Print Services, Inc., and GENCO Distribution System, Inc. are

the real parties-in-interest for this petition.

Related Matters B.

Petitioner filed a petition in IPR2017-00743 against the ’900 patent on

January 24, 2017, the same day that it filed this petition.

Patent Owner has asserted the ’900 patent in the following cases:


–42–

• Intellectual Ventures II LLC v. FedEx Corp. et al., No. 2:16-cv-980

(E.D. Tex.), complaint dated Aug. 31, 2016. See Ex. 1007.

• Intellectual Ventures II LLC v. FTD Cos. Inc. et al., No. 6:16-cv-195

(E.D. Tex.), complaint dated Mar. 8, 2016.

• Intellectual Ventures II LLC v. Sally Beauty Holdings, Inc. et al., No.

2:15-cv-1414 (E.D. Tex.), complaint dated Aug. 14, 2015.

The case against FedEx is pending. The cases against FTD and Sally Beauty have

been terminated. The terms of the ’900 patent have not been construed in any case

as of the filing date of this petition.

Lead and Backup Counsel C.

Lead counsel is:

• Jeffrey Berkowitz (Reg. No. 36,743)

(571) 203-2710, [email protected].

Backup counsel are:

• Michael V. Young, Sr. (Reg. No. 61,180)

[email protected], (571) 203-2788;

• Daniel Tucker (Reg. No. 62,781)


• A. Grace Klock Mills (Reg. No. 66,946)



–43–

• Alexander Boyer (Reg. No. 66,599)

[email protected], (571) 203-2759; and

• Bradford Schulz (Reg. No. 75,006)

[email protected], (571) 203-2739.

Service Information D.

Please send correspondence to the lead and backup counsel at Two Freedom

Square, 11955 Freedom Drive, Suite 800, Reston, VA 20190. Petitioner consents

to e-mail service at this e-mail address: [email protected].

Grounds for Standing IX.

Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’900 patent is

available for inter partes review and that Petitioner is not barred or estopped from

requesting this review on the grounds identified herein. This petition is timely filed

under 35 U.S.C. § 315(b), being filed within one year of service of Patent Owner’s

complaint alleging infringement. See Ex. 1007. In addition, no Post-Grant Review

has been instituted on the ’900 patent. See 35 U.S.C. § 311(c).

Fee Payments X.

An electronic payment of $23,000 for the inter partes review fee specified by

37 C.F.R. § 42.15(a)—comprising the $9,000 request fee and $14,000 post

institution fee—is being paid at the time of filing this petition. If there are


–44–

additional fees due in connection with this filing, please charge the fees to our

Deposit Account No. 06-0916.

Conclusion XI.

Petitioner has established that it is more likely than not that at least one

challenged claim is unpatentable and respectfully requests institution.

Date: January 24, 2017 Respectfully submitted,

/Jeffrey A. Berkowitz/ Jeffrey A. Berkowitz Registration No. 36,743 E-mail: [email protected] FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. Two Freedom Square, 11955 Freedom Drive Reston, VA 20190-5675 Tel. 571-203-2700 Fax 202-408-4400 Counsel for Petitioner

CERTIFICATE OF COMPLIANCE

The undersigned hereby certifies that the foregoing Petition for Inter Partes

Review contains 8,591 words, excluding those portions identified in 37 C.F.R.

§ 42.24(a), as measured by the word-processing system used to prepare this paper.

/Jeffrey A. Berkowitz/ Jeffrey A. Berkowitz

CERTIFICATE OF SERVICE

The undersigned certifies that the foregoing Petition for Inter Partes Review

was served on January 24, 2017, by Express Mail or by means at least as fast and

reliable as Express Mail at the following address of record for the subject patent.

The associated Exhibits 1001 through 1010 and the Power of Attorney were also

served on January 24, 2017.

Perkins Coie LLP - SEA General Patent-SEA P.O. Box 1247 Seattle, WA 98111-1247 AND Perkins, Coie LLP 1201 Third Avenue, Suite 4900 Seattle, WA 98101-3099 A courtesy copy was also sent to patent owner’s litigation counsel at the

following address:

Alan S. Kellman Desmarais LLP 230 Park Avenue New York, NY 10169

/Mark A. Rosenberger/ Mark A. Rosenberger Case Manager

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.

UNITED STATES PATENT AND TRADEMARK OFFICE FedEx Corp., …

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