before the patent trial and appeal board
Contents
1. 10 Case CBM2014 00156 Patent 7 711 100 Shamos s declaration Ex 1022 and pages 7 and 11 of Petitioner s Reply Paper 25 Dr Shamos s testimony is entirely consistent because Dr Shamos testified that as of December 1997 NeverLost was a conventional GPS navigation aid Ex 2013 87 21 88 1 And Dr Shamos explained that the claims do not even recite a step of determining a current location of the wireless device Ex 2013 88 17 89 12 Response to Observation 17 In Observation 17 PO argues that Dr Shamos s testimony about a user s manual entry of the location of the wireless device is inconsistent with J 27 28 36 and 50 of Dr Shamos s declaration Ex 1022 and with pages 6 8 and 9 of Petitioner s Reply Paper 25 Dr Shamos testified that he cited NeverLost for the proposition that fundamentally obtaining the current location of a wireless device was known and conventional already in 1995 Ex 2013 88 10 12 Dr Shamos explained the basis for his opinion in 27 of his declaration that the manual entry of a user s location would still fall within the scope of the claims using the example of a user typing their zip code on a store locator function such as Best Buy Ex 2013 91 8 92 9 Further Dr Shamos did not agree that determining the current location of the wireless device was inherent in the claim limitation requiring displaying at least one point of sale location based on a current location of2. 013 page 71 line 13 to page 72 line 4 existed as of December 1997 I don t know But that s the whole problem with preemption is that you claim things that you haven t invented and no one s invented yet Ex 2013 72 5 12 With regards to the use of light beams for communication Dr Shamos gave the example of infrared networks used to communicate between buildings in New York City before December 1997 Ex 2013 73 1 11 Response to Observation 11 In Observation 11 PO argues that Dr Shamos s testimony about point of sale locations is relevant to 29 30 of Dr Shamos s declaration Ex 1022 PO s observation omits the following testimony by Dr Shamos that precedes the quoted testimony I haven t offered construction on point of sale location The board in its institution didn t find it necessary to construe point of sale location Ex 2013 66 10 13 Dr Shamos also explained how this testimony applies to purchases made from online merchants at Ex 2013 page 66 line 19 to page 67 line 16 and in particular testified The there if one were forced to identify a point of sale it would be server that s operated by Case CBM2014 00156 Patent 7 711 100 Amazon that is accepting information from a user about what they want to order Ex 2013 67 3 6 Response to Observation 12 In Observation 12 PO argues that Dr Shamos s testimony regarding whether the preamble of claim 1 is consi
3. UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SQUARE INC Petitioner V UNWIRED PLANET LLC Patent Owner Case CBM2014 00156 Patent 7 711 100 PETITIONER S RESPONSE TO PATENT OWNER S OBSERVATIONS ON CROSS EXAMINATION OF DR MICHAEL SHAMOS Mail Stop Patent Board Patent Trial and Appeal Board U S Patent and Trademark Office P O Box 1450 Alexandria VA 22313 1450 Case CBM2014 00156 Patent 7 711 100 Pursuant s to the Board s May 5 2015 Revised Scheduling Order Paper 24 Petitioner submits the following Response to Patent Owner Unwired Planet LLC s Observations on cross examination of Dr Michael Shamos Paper 30 Response to Observation 1 PO cites to Dr Shamos s testimony that he did not talk to Jim Procter Petitioner s other expert and argues that this testimony is relevant to admissibility under FRE 402 403 and 702 This testimony is not relevant to any issue including whether the challenged claims of the 100 patent are directed to statutory subject matter Petitioner objects to Observation 1 as improper under the Board s rules on observations on cross examination Section L of the Office Patent Trial Practice Guide regarding Observations on Cross Examination states that An observation or response is not an opportunity to raise new issues re argue issues or pursue objections 77 Fed Reg 48755 48768 August 14 2012 PO s Observation 1 atte
4. at I wrote it from essentially from scratch Ex 2013 19 5 7 In the context of answering a question about whether the claims of the 100 patent claim an abstract idea Dr Shamos testified that The declaration is a rebuttal to the Chatterjee declaration It does not wander off into topics that were not raised by Dr Chatterjee Ex 2013 42 19 22 Furthermore PO s observation appears to be another attempt at pursuing objections to Dr Shamos s declaration in contravention of the Board s rules on observations on cross examination Section L of the Office Patent Trial Practice Guide 77 Fed Reg 48755 48768 Case CBM2014 00156 Patent 7 711 100 Response to Observations 4 6 In Observations 4 6 PO argues that Dr Shamos s testimony about what Dr Chatterjee s declaration states Observations 4 and 6 and about an issue that was not addressed in Dr Shamos s declaration Observation 5 is supposedly relevant to the question of whether Dr Shamos s declaration is admissible as relevant under FRE 402 and 403 admissible as expert testimony under FRE 702 or is properly responsive under 37 CFR 42 23 b Dr Shamos s testimony about what Dr Chatterjee s declaration says or about an issue that was not addressed in Dr Shamos s declaration is not relevant to whether the challenged claims of the 100 patent are directed to statutory subject matter Petitioner objects to Observations 4 6 as improper under t
5. dered limiting is relevant to whether Dr Shamos properly applied the broadest reasonable construction and his direct testimony in 21 and 41 of Ex 1022 that most if not all of the claimed steps could be performed by a human using pen and paper Dr Shamos s testimony is consistent with the broadest reasonable interpretation of the claims Dr Shamos testified that claim 1 could be interpreted as not requiring a wireless device Ex 2013 68 14 69 5 And Dr Shamos testified that even if the board concluded that a wireless device is required to practice the method of claim 1 the determining obtaining correlating and charging steps could be performed by a human using pen and paper because t hey don t mention any device Ex 2013 69 6 15 Response to Observation 13 In Observation 13 PO suggests that Dr Shamos s testimony at page 70 lines 17 22 regarding the particular point of sale location must be one of the ones that was displayed in the displaying step is somehow inconsistent with Petitioner s Reply at page 9 where Petitioner quotes a portion of the specification to state that The specification expressly contemplates an embodiment in which multiple menus are displayed and those menus include at Case CBM2014 00156 Patent 7 711 100 least one point of sale location based on user inputted location information Petitioner s Reply p 9 citing Ex 1001 at 8 33 37 There is no inconsistency betw
6. een Dr Shamos s testimony and Petitioner s Reply Dr Shamos specifically testified how manual entry of a user s location to display point of sale locations falls within the scope of the claims Ex 2013 91 8 92 9 Dr Shamos also testified that the determining step doesn t even mention the wireless device The wireless device doesn t have to do the determining Ex 2013 59 10 16 Response to Observation 14 In Observation 14 PO argues that certain testimony by Dr Shamos is inconsistent with his assertion in 28 of Ex 1022 that pagers did not have location determining technology Dr Shamos s testimony is not inconsistent In response to the question Right but telephone companies were capable as of December 1997 of locating the position of a two way paging device within that network as of December 1997 right what Dr Shamos testified was Tf it were a cellular paging device yes There are plenty of paging devices that are not cellular Ex 2013 77 11 17 emphasis added PO s Observation omits the second sentence of Dr Shamos s answer to argue an alleged inconsistency when there is none Nor is Dr Shamos s testimony unreliable or inconsistent with the broadest reasonable interpretation of the claims because Dr Shamos also testified that If the question is did telephone companies have technology that Case CBM2014 00156 Patent 7 711 100 could detect where a pager was they probably did The pager i
7. ents are covered by the challenged claims The cited testimony is not relevant to whether multiple embodiments are disclosed in the claims or whether all embodiments in the specification are covered by the challenged claims The cited portion of Dr Shamos s testimony relates to a question that PO s counsel asked relating to a 13 Case CBM2014 00156 Patent 7 711 100 specific multiple menu embodiment in the specification discussed in 140 of Dr Shamos s declaration Ex 2013 108 1 7 Dr Shamos identified menu 407 as the menu listing at least one point of sale location based on a current location of the wireless device Ex 2013 108 1 8 And in response to question about the determining step in relation to this multiple menu embodiment Dr Shamos testified The determining step doesn t mention a menu Ex 2013 108 9 19 Response to Observation 22 In Observation 22 PO suggests that certain cited testimony by Dr Shamos is somehow inconsistent with 41 of his declaration and also argues that it is relevant to differences in embodiments and whether all embodiments are within the scope of the challenged claims There is no inconsistency between Dr Shamos s testimony and the statements in 41 of his declaration Nor is there any relevance to the cited testimony regarding whether all embodiments are within the scope of the challenged claims In response to PO s question about why Dr Shamos characterized the menus discu
8. he Board s rules on observations on cross examination Section L of the Office Patent Trial Practice Guide regarding Observations on Cross Examination states that An observation or response is not an opportunity to raise new issues re argue issues or pursue objections 77 Fed Reg 48755 48768 August 14 2012 PO s Observations 4 6 attempt to pursue its objections to Petitioner s submission of Dr Shamos s declaration As such Observations 4 6 should be disregarded as improper and irrelevant Response to Observation 7 In Observation 7 PO argues that Dr Shamos s testimony about whether the claims purport to be limited to the use of a wireless device in a wireless network is relevant to whether Dr Shamos properly applied Case CBM2014 00156 Patent 7 711 100 the broadest reasonable interpretation of the claims in J 18 20 22 24 28 and 44 of Dr Shamos s declaration Ex 1022 With regards to whether the claims are limited to the use of a wireless device in a wireless network Dr Shamos repeatedly testified that he had not offered an opinion on that particular issue Ex 2013 54 11 55 5 30 14 32 4 As Dr Shamos explained in his deposition what s going on here is that there is a well known process that is sic the claim purports to be moving to a wireless environment Ex 2013 33 20 22 With regards to a wireless network Dr Shamos testified that a wireless network is not needed to practice the meth
9. ing a screen to perform the displaying step Ex 2013 63 15 64 10 Response to Observation 9 In Observation 9 PO argues that Dr Shamos s testimony about the use of a screen in a unidirectional wireless device is relevant to whether Dr Shamos properly applied the broadest reasonable interpretation of the claims in the entirety of Dr Shamos s declaration and more particularly to J 21 22 Ex 1022 Dr Shamos s interpretation of the claimed displaying step is within the broadest reasonable interpretation of the claim language because Dr Shamos testified that the wireless device mentioned in the claims of the 100 patent need not be capable of two way communication Ex 2013 63 6 14 Dr Shamos also testified that all steps of the method of claim 1 could be practiced using a walkie talkie as of December 1997 Ex 2013 75 5 76 6 because the menu the displaying of the menu I thought there was even disclosure that it could be done verbally Ex 2013 75 10 12 Case CBM2014 00156 Patent 7 711 100 Response to Observation 10 In Observation 10 PO argues that Dr Shamos s testimony about the use of various ways to practice the method steps is relevant to whether Dr Shamos properly applied the broadest reasonable interpretation of the claims Dr Shamos s testimony is consistent with the broadest reasonable interpretation of the claims As Dr Shamos explained when asked whether the technology described at Ex 2
10. mpts to pursue its objection to Petitioner s submission of Dr Shamos s declaration As such Observation 1 should be disregarded as improper and irrelevant Response to Observation 2 In Observation 2 PO cites Dr Shamos s testimony that the challenged claims of the 100 patent do not require location finding technology based on the literal words of the claim as being contrary to the broadest reasonable interpretation of the claim Dr Shamos s opinions are consistent with the Board s Institution Decision that the claims are not written narrowly to require 2 Case CBM2014 00156 Patent 7 711 100 the use of such locating technology Paper 11 at 15 Dr Shamos also testified that he agreed that the claims have to be construed in light of the specification so that one can understand what the meaning of the terms is Ex 2013 23 16 20 Paragraphs 36 45 of Dr Shamos s declaration Ex 1022 provide the basis for Dr Shamos s rebuttal to Dr Chatterjee s opinions and explain that the challenged claims do not require location finding technology Response to Observation 3 In Observation 3 PO cites Dr Shamos s testimony that he did not review the patent owner response in preparing his declaration This is not relevant to whether Dr Shamos s declaration is proper under 37 CFR 42 23 b because Dr Shamos also testified that I was asked to prepare a rebuttal to the declaration of Dr Chatterjee And I did th
11. od of claim 1 Ex 2013 34 20 35 11 With regards to a wireless device Dr Shamos testified that the 100 claims could be interpreted as not requiring a wireless device Ex 2013 68 14 69 5 Dr Shamos also testified that if the Board were to conclude that a wireless device is required to practice the method of claim 1 of the 100 patent the determining obtaining correlating and charging steps could be performed by a human using pen and paper because they don t mention any device Ex 2013 69 6 20 Response to Observation 8 In Observation 8 PO argues that Dr Shamos s testimony about the nature of the display of the wireless device is relevant to whether Dr Shamos properly applied the broadest reasonable interpretation of the claims in the entirety of Dr Shamos s declaration and more particularly to Jf 21 22 Ex 1022 Dr Shamos s interpretation of the claimed displaying step is Case CBM2014 00156 Patent 7 711 100 within the broadest reasonable interpretation of the claim language because as he pointed out in his quoted testimony I think the device has to be capable of displaying Ex 2013 62 14 15 Dr Shamos also explained that the claimed wireless device need not be programmable at all Ex 2013 62 6 10 and need not be capable of two way communication Ex 2013 63 6 14 Dr Shamos further explained the displaying that could be performed by such a unidirectional wireless device us
12. of the wireless device needs to be determined There isn t even a step of determining it the location of the wireless device So it s not disclosed in the specification Ex 2013 99 7 18 12 Case CBM2014 00156 Patent 7 711 100 Response to Observation 20 In Observation 20 PO suggests that Dr Shamos s testimony about the exact number of embodiments disclosed in the specification is relevant to whether there are multiple embodiments disclosed in the claims and whether all of the embodiments are covered by the challenged claims The cited portion of Dr Shamos s testimony relates to a question that PO s counsel asked relating to a specific multiple menu embodiment in the specification discussed in 40 of Dr Shamos s declaration Ex 2013 105 10 21 This testimony is not relevant to whether multiple embodiments are disclosed in the claims or whether all embodiments in the specification are covered by the challenged claims In response to a question whether the particular multiple menu embodiment discussed in his declaration at 40 was a preferred embodiment Dr Shamos testified I don t know but I m not suggesting a claim construction that would read it out Ex 2013 106 10 14 Response to Observation 21 In Observation 20 PO suggests that Dr Shamos s testimony about a particular embodiment is relevant to whether there are multiple embodiments disclosed in the claims and whether all of the embodim
13. ssed in paragraph 41 of his declaration as a preferred embodiment Dr Shamos explained that he was referring to the specification s quote from column 7 line 65 to column 8 line 4 Ex 2013 109 13 110 11 Response to Observation 23 In Observation 23 PO suggests that certain testimony by Dr Shamos is inconsistent with 41 of his declaration and argues that this testimony is relevant because it relates to the issue of whether all of the 14 Case CBM2014 00156 Patent 7 711 100 multiple embodiments disclosed in the 100 patent s specification are within the scope of the challenged claims Dr Shamos s testimony is not relevant to whether all embodiments are within the scope of the claims In response to a question about whether the displaying step of claim 1 would be met by an embodiment that displays all the point of sale locations in all categories without regard to whether they fall within a particular geographic area Dr Shamos testified Interesting question I haven t looked at it before Ex 2013 114 19 20 Dr Shamos did not testify that this embodiment wasn t covered by the claims only that the hypothetical that Dr Shamos created on the fly during the deposition did not Ex 2013 115 5 22 Response to Observation 24 In Observation 24 PO cites to certain testimony by Dr Shamos to argue that it is relevant to 42 and 28 of his declaration Ex 1022 Dr Shamos s testimony is not inconsistent
14. the wireless device Okay so the displaying step requires that the stuff that you display to the user has to be based on a location of the 11 Case CBM2014 00156 Patent 7 711 100 wireless device I agree with that What you were asking is whether there is an inherent determining step where a determination has to be made where the wireless device is And the answer is no Ex 2013 89 13 90 10 Response to Observation 18 In Observation 18 PO argues that Dr Shamos s testimony at page 98 line 19 to page 99 line 1 is relevant to Dr Shamos s opinions that the claimed invention is not a technical solution and is relevant to Petitioner s Reply that the patents do not solve a technical problem Paper 25 pp 6 7 There is no inconsistency because PO s partial quote omits Dr Shamos s testimony that I don t agree that the method claimed in the patent is new Because there were already websites that made use of the current location of the wireless device in order to make a display of point of sale locations But I agree that it provides an advantage over other methods Ex 2013 99 2 6 Response to Observation 19 In Observation 19 PO suggests that Dr Shamos s testimony regarding Dunworth are inconsistent with 38 and 48 of his declaration and pages 8 and 15 of Petitioner s Reply Paper 25 There is no such inconsistency because Dr Shamos testified that There isn t even a discussion of how the location
15. tself did not have any location determining technology Ex 2013 77 7 10 Response to Observation 15 In Observation 15 PO argues that Dr Shamos s testimony about a hypothetical embodiment using a LCD projector is relevant to whether Dr Shamos properly applied the broadest reasonable construction in light of the specification Dr Shamos s testimony is consistent with the broadest reasonable interpretation of the claims Dr Shamos was also asked the following question So is it your opinion that as of December 1997 one of ordinary skill in the art would have interpreted this method claim claim 1 to including transmitting the correlated transaction amount to the wireless device for display to the user as projecting using an LCD projector the correlated transaction amount onto a screen Ex 2013 79 19 80 3 In response to this question Dr Shamos testified I m not sure that they would have interpreted that that way if you asked them what does that mean But then if you said well if I do it this way would it fall within the scope of the claims they could well say yes Ex 2013 80 4 8 This testimony explains the reason behind Dr Shamos s hypothetical and is consistent with the broadest reasonable interpretation of the claims in light of the specification Response to Observation 16 In Observation 16 PO suggests an inconsistency between Dr Shamos s testimony regarding Hertz s NeverLost and 27 of Dr
16. with 42 of his declaration which states in pertinent part that Further the Summary of the Invention states that the point of sale location can be identified by entering a unique location identifier on the wireless device Ex 1022 42 quoting Ex 1001 2 33 Dated July 14 2015 MAYNARD COOPER amp GALE LLP J Sasha G Rao Reg 57017 15 Case CBM2014 00156 Patent 7 711 100 16 srao maynardcooper com 275 Battery Street Suite 1350 San Francisco CA 94111 Tel 415 591 8223 Fax 415 358 5650 Attorneys for Petitioner Case CBM2014 00156 Patent 7 711 100 CERTIFICATE OF SERVICE The undersigned hereby certifies that the above captioned PETITIONER S RESPONSE TO PATENT OWNER S OBSERVATIONS ON CROSS EXAMINATION OF DR MICHAEL SHAMOS was served upon the following parties on July 14 2015 via electronic mail Timothy Bianchi Lead Counsel tbianchi slwip com Thomas Reynolds Back Up Counsel treynolds slwip com Brett Schuman Back Up Counsel bschuman goodwinprocter com Attorneys for Patent Owner Dated July 14 2015 MAYNARD COOPER amp GALE LLP oO 5 By tek fe Sasha G Rao Reg 57017
Download Pdf Manuals
Related Search