Professional Documents
Culture Documents
: 10121-0008
Filed on behalf of Unified Patents Inc.
v.
IPR2017-01865
TABLE OF CONTENTS
Page
I. INTRODUCTION .......................................................................................... 1
II. MANDATORY NOTICES ............................................................................ 1
A. Notice of Real Party-in-Interest (37 C.F.R. 42.8(b)(1)) .................... 1
B. Notice of Related Matters (37 C.F.R. 42.8(b)(2)) ............................. 1
C. Notice of Lead and Backup Counsel (37 C.F.R. 42.8(b)(3)) ............ 2
D. Notice of Service Information (37 C.F.R. 42.8(b)(4)) ...................... 2
E. Proof of Service .................................................................................... 2
F. Fee for Inter Partes Review ................................................................. 2
III. CERTIFICATION OF GROUNDS FOR STANDING ................................. 3
IV. PRECISE RELIEF REQUESTED ................................................................. 3
A. Priority Date of the 619 Patent............................................................ 3
B. Prior Art Patents and Printed Publications ........................................... 3
1. Prior Art under 35 U.S.C. 102(a) ......................................... 3
2. Prior Art under 35 U.S.C. 102(b) ........................................ 4
C. Grounds for Challenge ......................................................................... 4
V. RELEVANT INFORMATION CONCERNING THE 619 PATENT ......... 4
A. Technology Background ...................................................................... 4
B. Summary of the Alleged Invention ...................................................... 5
C. Prosecution History of the 619 Patent ................................................ 7
VI. The PERSON OF ORDINARY SKILL IN THE ART .................................. 7
VII. CLAIM INTERPRETATION ........................................................................ 7
VIII. DETAILED ANALYSIS OF GROUNDS FOR UNPATENTABILITY ...... 8
A. Ground 1: Claims 1 and 7 are Rendered Obvious by Penzias in view
of Clagett and further in view of Nimura ............................................. 8
1. Overview of Penzias ................................................................. 8
2. Overview of Clagett ................................................................ 11
3. Overview of Nimura ............................................................... 14
4. Claim 1 is obvious based on Penzias, Clagett, and Nimura . 16
5. Claim 7 is obvious based on Penzias, Clagett, and Nimura . 28
i
IPR2017-01865 Petition
Patent 5,973,619
ii
IPR2017-01865 Petition
Patent 5,973,619
iii
IPR2017-01865 Petition
Patent 5,973,619
1001 U.S. Patent No. 5,973,619 (the 619 patent) to Paredes et al., titled
Automated Vehicle Dispatch and Payment Honoring System
1002 File History for the 619 patent
1003 U.S. Patent No. 5,604,676, which is titled System and Method for
Coordinating Personal Transportation, to Penzias (Penzias)
1004 U.S. Patent No. 5,218,633, titled Enhanced Access to
Telecommunications Network, to Clagett (Clagett)
1005 U.S. Patent No. 5,231,584, titled Navigation Apparatus with Non-
Volatile Memory for Return to Initiation Departure Point, to Nimura
(Nimura)
1006 U.S. Patent No. 5,543,789, titled Computerized Navigation System, to
Behr (Behr)
1007 U.S. Patent No. 5,337,046, titled System for Communication between
Pedestrians and Vehicles, to Grasset (Grasset)
1008 U.S. Patent No. 4,092,718, titled Computerized Dispatching System,
to Wendt (Wendt)
1009 U.S. Patent No. 5,559,707, titled Computer Aided Routing and
Positioning System, to DeLorme (DeLorme)
1010 U.S. Patent No. 4,360,875, which is titled Multi-Source Switching in a
Television System, to Behnke (Behnke)
1011 U.S. Patent No. 5,168,451, which is titled User Responsive Transit
System, to Bolger (Bolger)
1012 Expert Declaration of Scott Andrews
1013 U.S. Patent No. 5,377,113, which is titled Navigation System for Use in
Vehicle, to Shibazaki (Shibazaki)
1014 Complaint in Hailo Technologies, LLC d/b/a Bring v. Uber
Technologies, Inc., 2-17-cv-03028 (C.D. Cal. Apr. 24, 2017)
1013 U.S. Patent No. 5,377,113, which is titled Navigation System for Use in
Vehicle, to Shibazaki (Shibazaki)
iv
IPR2017-01865 Petition
Patent 5,973,619
1020 Cass
1021 Weiland
1022 Oshizawa
1023 Honey
1024 U.S. Patent No. 5,580,566, titled Electronic Navigation System and
Method, to Behr (Behr 566)
1025 U.S. Patent No. 6,330,497, titled Multimedia Technique for Operating
Devices in a Vehicle, to Obradovich (Obradovich)
v
IPR2017-01865 Petition
Patent 5,973,619
I. INTRODUCTION
Petitioner requests inter partes review (IPR) under 35 USC 103 of claims
17 of U.S. Patent No. 5,973,619 (the 619 Patent), titled Automated Vehicle
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial. In this regard, Unified has submitted voluntary discovery. See
The records of the U.S. Patent and Trademark Office (USPTO) indicate
that the 619 Patent (EX1001) is owned by Alexis Paredes (Patent Owner).
However, in district court litigation, it has been asserted that Hailo Technologies,
LLC, dba Bring, is the sole owner of the 619 patent. EX1014, 2.
1
IPR2017-01865 Petition
Patent 5,973,619
The 619 Patent is the subject of the following district court proceedings:
(C.D. Cal. Apr. 21, 2017) and Hailo Technologies, LLC d/b/a Bring v. Lyft, Inc., 2-
Kevin B. Laurence (Reg. No. 38,219) will act as lead counsel, and Jonathan
Stroud (Reg. No. 72,518) and Matthew C. Phillips (Reg. No. 43,403) will act as
backup counsel.
LLP, 1940 Duke Street, Suite 200, Alexandria, Virginia 22314 and (703) 972-6000
and Unified Patents Inc., 1875 Connecticut Ave. NW, Floor 10, Washington, D.C.
E. Proof of Service
2
IPR2017-01865 Petition
Patent 5,973,619
which review is sought is available for IPR and that Petitioner is not barred or
estopped from requesting an IPR challenging the patent claims on the grounds
party-in-interest.
and qualify as prior art to the 619 Patent under 35 U.S.C. 102.
a) Penzias
Penzias was filed on July 25, 1994, and issued on Feb. 18, 1997.
b) Behr
Behr was filed on Jun. 24, 1994, and issued on Aug. 6, 1996.
c) DeLorme
DeLorme was filed on Jan. 31, 1995, and issued on Sep. 24, 1996.
3
IPR2017-01865 Petition
Patent 5,973,619
a) Clagett
b) Nimura
c) Grasset
d) Wendt
A. Technology Background
4
IPR2017-01865 Petition
Patent 5,973,619
The 619 Patent is directed to a taxi dispatch and payment system. EX1001,
Abstract. The 619 Patent has a brief disclosure (six pages of figures and less than
In this Petition, colors are used to correlate claim terms with other text and
portions of figures. The colors include green for a user, consumer, or passenger;
blue for communication with the consumer or a driver; sky blue for a destination;
communicate with a system. The system may also communicate with the
selects a company and a desired destination, inputs the number of passengers, and
views a display of the approximate fare and payment options honored by the
vehicle.
below and depicts a flowchart of the overall process along with various user
selection options.
5
IPR2017-01865 Petition
Patent 5,973,619
6
IPR2017-01865 Petition
Patent 5,973,619
A person of ordinary skill in the art (POSA) in the field of the 619 Patent
programming at the time of invention. The person would have gained this
could obtain this level of skill with training or several years of related work
experience with programming. The more education one has (e.g., post-graduate
degrees), the less experience needed to attain an ordinary level of skill. Likewise,
The 619 Patent expired on June 10, 2017. For an expired patent, the Board
applies the same standard as a district court. See In re CSB-Sys. Int'l, Inc., 832
F.3d 1335, 134142 (Fed. Cir. 2016). Petitioner requests that all claim terms be
interpreted using the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303,
7
IPR2017-01865 Petition
Patent 5,973,619
1. Overview of Penzias
are provided below as a combined image, because Penzias indicates they should be
8
IPR2017-01865 Petition
Patent 5,973,619
Penzias uses multipassenger vehicles such as vans that are monitored and
pick-up location and b) the destination and, optionally, c) a desired time of arrival
and d) the number of people. Id., 1:4550. Then, a suitable path to the
customer interface. Id., 5:5659. Customer PT agent 151 is a logical process that
interfaces with customer 150 to receive the customer's ride request and relay that
ride request in a form compatible with personal transport server 101. Id., 5:5256.
The personal transport server 101 controls overall operation of the personal
requests for rides and coordinates communication among the other units of the
personal transport service. Id., 3:4649. Routing unit 110 has a router server 111,
which receives a layout of the roads in the area from a map server 113 by
accessing information stored in maps database 119. Id., 2:6062. Router server
111 also receives from vehicle tracking server 117 the position, and optionally the
Upon receipt of paths from routing unit 110, personal transport server 101
submits the paths to accounting unit 130. Id., 4:1113. Accounting unit 130
9
IPR2017-01865 Petition
Patent 5,973,619
returns to personal transport server 101 a price for each path. Id., 4:1314.
Personal transport server 101 relays the paths and their corresponding prices back to
the customer over the same connection over which it had received the request from
the customer. Id., 4:1417. The customer then chooses a desired path which is
relayed to personal transport server 101. Id., 4:1819. The personal transport
server 101 adds the selected path to its representation of the scheduled
paths. Confirmation of the selected path may be supplied to the customer. Id., 4:20
21.
The accounting unit 130 includes fare server 131 connected to rates data base
137. The fare server 131 computes the fares for each path supplied by personal
transport server 101. Id., 4:6264. The accounting unit 130 also includes account
server 133 connected to accounts data base 139. Id., 5:35. The account server 133
is responsible for billing a passenger after completing a ride. Id., 5:35. The account
server 133 may be connected to credit services 138, e.g., commercial credit card data
The functions of personal transport server 101, routing unit 110, accounting
unit 130, are implemented by various computers as shown in figure 4. Id., 9:29
10
IPR2017-01865 Petition
Patent 5,973,619
The display of each computer enables a customer to enter the relevant data and see
the paths and their corresponding prices over the same connection from which the
request of the customer was received. Id., 4:1117. The display also enables a
customer to select a desired path. Id., 4:1819. The consumer then pays for the
selected path and receives confirmation of the selected path via the display. Id.,
6:6367.
2. Overview of Clagett
station may be used by a traveler or business person desiring taxi service in a strange
city. Id., 7:1921. The traveler may call up the directory information from the
relating to listed taxi services, which permits the user to select a taxi company from
those listed in the yellow page directory information. Id., 7:2126; 4750. The user
may select a destination using map information from the disk including nearby hotels,
11
IPR2017-01865 Petition
Patent 5,973,619
payment mechanism illustrated as a coin or card slot (or both) 16, a display screen
18, and cursor control switches or buttons 20. Id., 3:4653. The cursor buttons
The cursor switch 20 allows the user to control the position of the screen graphics
The display screen 18 and the cursor control switches or button 20 enable a
traveler to select a taxi company from those displayed and listed from an electronic
12
IPR2017-01865 Petition
Patent 5,973,619
EX1004, 7:1942.
13
IPR2017-01865 Petition
Patent 5,973,619
3. Overview of Nimura
Nimura depicts an input unit 1 with input means for departure point input 5 and
unit 4, which is in communication with a CPU 2 and a display unit 3. Id., 5:3362.
Figure 1 of Nimura.
confirmation of the selection. The listed destination genres in Figure 11a include
are displayed in a color indicating that they are selectable items, and a desired
14
IPR2017-01865 Petition
Patent 5,973,619
Figure 11b shows the listed destinations available after selecting a genre.
15
IPR2017-01865 Petition
Patent 5,973,619
Nimura and when claim 1 is considered as a whole it would have been obvious
based on the combination. EX1012, 112. To the extent the preamble is considered
limiting, the various sections of the preamble are listed below with citations to
1:710.
The system disclosed in Penzias generates multiple options for paths between a
pick-up location and a destination and determines the price for each path. EX1003,
6:5362; 4:1117; 2:5258. The paths and fares are forwarded as an instructional
16
IPR2017-01865 Petition
Patent 5,973,619
via personal transport server 101, which relays the paths and their corresponding
prices back to the customer over the same connection over which it had received
the request from the customer. Id., 4:1417; see also 5:556:62. Examples of
such connections include communication mediums 186 and 189 as shown above in
and does not appear anywhere else in the claims or specification. In a Response
filed on May 13, 1999, the phrase private transportation companies was added to
the preamble. EX1002, 49. In the remarks of the Response, it was stated that
transportation companies such as taxis. EX1002, 50. Based on this assertion, the
system of Penzias may represent different transportation companies such that the
paths in Penzias are offered by more than one transportation company to provide
desiring taxi service in a strange city to select an option from the taxi companies
may identify a taxi company capable of rendering prompt service to the location of
17
IPR2017-01865 Petition
Patent 5,973,619
the particular telephone station. Id., 7:3033. However, Clagett indicates a user
selects a taxi company from those listed in a yellow page directory with a program
actuated cursor and then presses a button to actuate an autodialer to initiate a call to
the designated taxi company for dispatch of a taxi to the telephone station. Id.,
7:3338. A POSA would have been motivated to enable the paths in Penzias to be
associated with various taxi companies, as taught by Clagett, because the taxi
companies provide security and the resulting competition yields better prices and
receive messages about the listed destinations such as confirmation of the selected
of Nimura depict a touch panel enabling a user to select a genre and then a
particular destination from listed destinations (just like Figure 1 of the 619
Patent). Id.
18
IPR2017-01865 Petition
Patent 5,973,619
customer requests for rides. EX1003, 3:4451. After a customer selects a desired
path, the selection is relayed to personal transport server 101 and then the
vehicle is dispatched and server 101 makes any necessary adjustments to the route
of the vehicles. Id., 4:1823. To the extent the vehicles in Penzias are not
considered to be taxis, Clagett discloses that a user selects a taxi company from
those listed in a yellow page directory by using a program actuated cursor and then
19
IPR2017-01865 Petition
Patent 5,973,619
Penzias and Clagett disclose claim 1-pre4. EX1012, 117. Penzias teaches
an electronic payment system with cards debited by the amount of the transport,
and Clagett discloses payment with coins and tokens. Id. Some of the relevant
content from Penzias and Clagett regarding claim 1pre-4 are cited below.
20
IPR2017-01865 Petition
Patent 5,973,619
discloses that each computer has a display 309 as shown below in figure 5:
Figure 5 of Penzias (EX1003). The display 309 and customer interface 307
enables each computer of a customer (operator) to display the paths for vehicles
generated by the system in Penzias and enables the customer to select one of the
paths between a pick-up location and a destination. Id., 4:1119; 6:5367. These
vehicles implicitly involve authorized entities or else they would not be associated
Clagett discloses a system that uses yellow page directory information for
taxi service, which necessarily includes a list of taxi companies, and the traveler
makes the selection, through the use of a cursor and a selection button as viewed
21
IPR2017-01865 Petition
Patent 5,973,619
nearby hotels and restaurants, which a consumer would also want to see in a list
licensed to operate in the jurisdiction, the taxi companies in Clagett are authorized
licensed company and the competition provided by the licensed companies. Based
22
IPR2017-01865 Petition
Patent 5,973,619
on at least these factors, a POSA would have been motivated to enable the paths in
Clagett. Id.
developing the routes and paths, the capacities and occupancies, or projected
passengers that will travel in the vehicle is identified, Penzias implicitly prompts
Clagett discloses use of prompts from the system to enter relevant information and
prompt and required entry of passenger data in Penzias, and the known use of a
prompt as discussed in Clagett, a POSA would have considered it obvious for the
without such a prompt, either by providing a field to be filled on the display screen,
23
IPR2017-01865 Petition
Patent 5,973,619
or by asking the user to enter the number of passengers, the system would not
request for a path based on a destination location and a pick-up location via a
customer interface and display, such as display 309 in Figure 5. EX1003, 2:5258.
Figures 11ab of Nimura depict a touch panel enabling a user to review listed
destinations and to select a genre. Just like Figure 1 of the 619 Patent, Figure 11a
24
IPR2017-01865 Petition
Patent 5,973,619
lists destination genres and Figure 11b shows some options available in a particular
genre. EX1005.
Clagett discloses use of a display to select taxis, hotels, restaurants, fast food
would have been motivated to modify Penzias by Clagett and Nimura such that the
customer interface and display of Penzias is modified by the display of Nimura for
graphically illustrating destination locations such that a visitor to a city can easily
knowing the physical address as in Nimura in addition to allowing the user to enter
25
IPR2017-01865 Petition
Patent 5,973,619
Claim 1d: (4) displaying the approximate fare for the number
of passengers promoted to a selected destination
and types of payment options honored by said
selected company;
personal transport server 101. Accounting unit 130 returns to personal transport
server 101 a price for each path. Id., 4:1314. Each path terminates at a selected
destination. Id., 1:4750. Personal transport server 101 relays the paths and their
corresponding prices back to the customer over the same connection over which it
had received the request from the customer. Id., 4:1417; see also 4:625:2; 5:53
26
IPR2017-01865 Petition
Patent 5,973,619
6:60; 6:5862. Routing unit 110 develops paths for the ride of each passenger
and routes for each of the multipassenger vehicles. EX1003, 2:4549. Router
personal transport server 101, which communicates with accounting unit 130,
passengers in a party. EX1012, 143146. The path and corresponding prices are
and display 309. Id., 77. The price is approximate because each vehicle offers
other services and the rates may vary during transit. EX1003, 4:4247; 4:5267.
Penzias thus makes obvious the factors used to calculate the approximate fare for a
path to a selected destination, such as the number of passengers, and displaying the
approximate fare.
available credit services 138, e.g., commercial credit card data bases or telephone
customer databases. Id., 5:96:4. Such credit card databases are the same
payment options used in the 619 Patent, which discloses that a Card Reader 1300
27
IPR2017-01865 Petition
Patent 5,973,619
payment options are displayed in the same way that information is displayed about
the approximate fare at customer interface 195 and display 309. Id., 77.
above with respect to claims 1-pre2 and 1-pre3, Penzias teaches dispatch of a
vehicle, such as a taxi, when a customer selects a path and Clagett discloses that a
user depresses a button to use an autodialer that initiates a call to a designated taxi
company.
Claim 1f: (6) estimate the approximate arrival time for said
dispatched taxi.
Penzias discloses claim 1f. EX1012, 153. For example, claim 6 of Penzias
EX1003, 10:3739.
Penzias, Clagett and Nimura render obvious claim 7, which depends from
Penzias states that [c]onfirmation of the selected path may be supplied to the
customer and may include additional details such as the location of the transfer
points. EX1003, 6:6365. Because the selected path includes the destination,
28
IPR2017-01865 Petition
Patent 5,973,619
Penzias teaches display of the destination and a POSA would have found it
obvious that the display of the transfer points would also include information about
respect to claims 1-pre2, 1-pre4, and 1d. For example, Penzias indicates that the
fares are forwarded to the individual who requested a ride. EX1003, 6:5362.
accounting unit 130, has a display 309 and as shown in figures 1 and 2, accounting
unit 130 communicates with customer 150 via personal transport server 101 and
customer interface 195. Clagett describes that the screen presents a confirmation
Confirmation of the order placed in Clagett would be displayed on the screen and
would include the amount due to be paid via the payment mechanism including the
coin slot 26 and the credit/debit card slot 28, as depicted in figure 1. EX1012,
155156.
discussed with respect to claims 1b and 1d. For example, Penzias indicates that
the router server 111 maintains a complete representation of the number of passengers
in the party. EX1003, 2:4557. Router server 111, as shown in figures 1 and 2,
29
IPR2017-01865 Petition
Patent 5,973,619
communicates with customer 150 via personal transport server 101 and customer
interface 195. A POSA would expect information about the number of passengers
communication with the passengers and each vehicles driver to provide the drivers
with the identities, e.g., [the] names, of the passengers who are boarding and the
1:632:1.
Figure 11(c) of Nimura (EX1005). Nimura states that the selected destination may
be backlighted in, say, the color blue, while the other items appear in dark blue, so
that the driver may easily confirm the selection made. Id., 4:58. By always
30
IPR2017-01865 Petition
Patent 5,973,619
destinations can be entered accurately. Id., 4:1115. Nimura clearly teaches the
11(c).
information about path options, chooses a desired path based on factors such as the
estimated price, and may request changes to the selected path. EX1003, 3:654:23;
4:4861. A POSA would have been motivated to enable each path in Penzias to be
by Clagett, so resulting competition yields better prices and response times and
provides a consumer with greater choices based on factors such as cost, arrival time,
POSA would have been further motivated to enable each path in Penzias to be
160162.
31
IPR2017-01865 Petition
Patent 5,973,619
receive messages about the listed destinations such as confirmation of the selected
it would have also been obvious to combine Penzias, Clagett, and Nimura
according to known methods, thereby yielding predictable results. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007); MPEP 2143(A). As explained above, all
the claimed elements were known in Penzias, Clagett, and Nimura. A POSA could
have combined the path development and presentation in Penzias with the use of
data about various transportation companies as taught by Clagett and the use of the
with no change in their respective functions, by known methods, and with each
160162. A POSA would have recognized that the results of the combination
1. Overview of Behr
32
IPR2017-01865 Petition
Patent 5,973,619
from a base unit. Behr discloses language queries performed to select a language.
EX1006, 10:47. The system in Behr enables a language query to request a list of
available languages for display of information at the mobile unit or specifies the
Penzias, Clagett, Nimura, and Behr render obvious claim 2, which recites
Penzias, which are discussed with respect to claim 1-pre2, are delivered to
have been motivated to make the system useful to as many consumers as possible
including tourists and other visitors who likely speak many different languages.
Id. For example, Clagett highlights the systems usefulness for a traveler or
POSA would have been motivated to modify Penzias and Clagett to provide
33
IPR2017-01865 Petition
Patent 5,973,619
Penzias, Clagett, Nimura, and Behr render obvious claim 3, which depends from
claim 1 and recites wherein said destination locations selected on said computer
regarding claims 1-pre2 and 1c, Penzias discloses that a consumer selects a
destination and a path to the destination. EX1003, 2:5258. Clagett discloses that
its display screen 18 features a cursor control switch or button, which have a
conventional x-y or up-down, left-right form. EX1004, 3:5156; see also 5:2731.
information over the screen at intervals or releasing the search key. Id., 1:5256.
(depicted with dots) that is different (depicted with no dots) from the other options.
Id., 4:58.
34
IPR2017-01865 Petition
Patent 5,973,619
a computer system such as Penzias and Clagett when selected based on the
graphical display. EX1006, 14:69. A POSA would have been motivated to use
the system of Penzias in combination with the displays of Clagett, Nimura, and
thus have been obvious to a POSA for the destination locations selected on the
35
IPR2017-01865 Petition
Patent 5,973,619
Penzias, Clagett, Nimura, and Behr render obvious claim 4, which adds a
external to routing unit 110, e.g., road related information services 118 such as
data, e.g., rush hours, holiday traffic loads, etc. EX1003, 2:603:6; see also 11:38
56 and 13:2149. Based on the disclosure of the additional information about road
To the extent that Penzias is not considered to meet the limitation of claim 4,
Nimura discloses, as described below with reference to its figure 8, the step of
182.
36
IPR2017-01865 Petition
Patent 5,973,619
in which there are stored code numbers, the names of destinations, information
about parking lots, photographs of connecting intersections and parking lots, and
To the extent that Penzias and Nimura are not considered to meet the
37
IPR2017-01865 Petition
Patent 5,973,619
units from which requests are sent seeking a route between an origin and a
destination. Id. 5:672; 6:3537. After the route is calculated, the base unit 12
provides a response to the request and [t]he response is displayed on the display
46. Id., 7:13. The route is calculated by route calculator 66 using the map
38
IPR2017-01865 Petition
Patent 5,973,619
database 72. Id., 8:5052. Map data base 72 receives additional data from
traffic advisory information for responding to queries from a mobile unit. Id.,
9:4849. The additional data may also be added directly to and located within the
map database 72. Id., 9:5253. The response to the request is displayed on the
display 30. Id., 7:13. The display 30 thus may display additional information on
the destination locations such as on-line yellow pages information and traffic
EX1012, 183185. The combination of Penzias, Clagett, Nimura, and Behr thus
Penzias, Clagett, Nimura, and Behr render obvious claim 5, which depends
39
IPR2017-01865 Petition
Patent 5,973,619
Nimura explicitly lists in figure 1, region name list 14, which includes
Figure 1 of Nimura (EX1005). For example, figure 25a of Nimura shows Kyoto as
40
IPR2017-01865 Petition
Patent 5,973,619
information. EX1006, 8:5961. A POSA would have been motivated to use the
Penzias, Clagett, Nimura, and Behr render obvious claim 6, which depends
from claim 1 and recites wherein said graphically illustrating destination locations
includes an enlarged map with streets names and directions to said locations.
41
IPR2017-01865 Petition
Patent 5,973,619
destination, thereby providing the customer with street names and directions to the
location because Penzias states that the path specifies the roads over which a rider
will travel as well as the particular ones of said vehicles that said rider will ride in
and the locations of any transfers that said rider must take. EX1003, 11:5056;
Nimura indicates that the display unit can output guidance information
Figure 2 of Nimura.
showing map portions and providing travel directions along with a display of
highway signs and other information. EX1006, 4:2931. The map portions in
Behr may be equated with the enlarged map recited in claim 6 because the map
portions are necessarily enlarged portions of a map so that the route may be easily
42
IPR2017-01865 Petition
Patent 5,973,619
viewed. EX1012, 195197. It would thus have been obvious to a POSA for the
Clagett, and Nimura with the teachings of Behr to arrive at the claimed invention.
EX1012, 199200. Penzias and Clagett relate to systems for those needing
transportation, which is a group of people that often includes tourists and other
visitors. Id. Because such consumers often speak languages other than the
primary language in which the system is used and many locations have
Penzias, Clagett, and Nimura to use the ability of Behr to function in more than
one language. Id. Additionally, a POSA would have been motivated to replace the
use of media in Clagett to obtain a list of taxi companies with the links to
EX1006, 9:4849.
it would have also been obvious to combine Penzias, Clagett, Nimura, and Behr
according to known methods, thereby yielding predictable results. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007); MPEP 2143(A). As explained above, all
43
IPR2017-01865 Petition
Patent 5,973,619
the claimed elements were known in Penzias, Clagett, Nimura, and Behr. A POSA
could have combined the path development and presentation in Penzias with the use
of data about various transportation companies as taught by Clagett, the use of the
and the features of Behr discussed with respect to claims 26 such as foreign
methods, and with each element merely performing the same function as it does
separately. EX1012, 199200. A POSA would have recognized that the results
Penzias, Clagett, Nimura, and Behr. Additionally, claims 26, when considered as
1. Overview of Grasset
display, and to pay for the transportation with an electronic payment means.
44
IPR2017-01865 Petition
Patent 5,973,619
Each driver uses a transmitter/receiver means 200 that appears and functions
for identification of the vehicle and/or of the vehicle driver. Id., 2:6467. Each
driver may also use a memory medium 232 such as a microcomputer card
providing the drivers identity, a code number, and the identity of the drivers
45
IPR2017-01865 Petition
Patent 5,973,619
A pedestrian sends a request for a ride, is matched with a driver, and then
has a dialogue, via radios or computers, with the driver to reach an agreement. Id.,
considering other offers for a ride. EX1012, 224. After the pedestrian selects the
driver then the vehicle is automatically dispatched to the pedestrian based on the
request signal, which represents the destination desired by the pedestrian and the
associated with codes and the map and destinations are displayed on a display of
10:4143.
or regions. Id., 5:1923; 10:5253. For example, the city of Paris may be
46
IPR2017-01865 Petition
Patent 5,973,619
partitioned into twenty parts corresponding to the twenty districts of the city, as
Grasset uses a payment honoring system wherein each pedestrian and driver
has a card associated with an account that is credited and debited and is
47
IPR2017-01865 Petition
Patent 5,973,619
2. Overview of Wendt
Wendt, which was cited in the 619 Patent, provides a station for a consumer
48
IPR2017-01865 Petition
Patent 5,973,619
of the fare and a ticket dispenser 13 dispenses a ticket upon payment. Id., 3:2831.
EX1008, figure 2
illuminated sign) reports the arrival, from the central office, of a signal confirming
49
IPR2017-01865 Petition
Patent 5,973,619
signal from the computer, also stored in that register, operates an indicator 12 to
display the expected time of arrival of the dispatched vehicle. Id., 2:68; 2:3336.
when claim 1 is considered as a whole it would have been obvious based on the
combination. EX1012, 201. To the extent the preamble is found to be limiting, the
various sections of the preamble are listed below with citations to some of the
50
IPR2017-01865 Petition
Patent 5,973,619
keyboard 104, a microphone 110, and a display 112. EX1007, 2:3563; 1:3843.
Each driver has a transmitter/receiver means 200 appearing and functioning like
51
IPR2017-01865 Petition
Patent 5,973,619
EX1007, figure 1.
Grasset also discloses that [t]he invention applies to any type of vehicle, but
consumers for the private vehicles, which are not centrally controlled in Grasset, to
containing information for identification of the vehicle and/or of the vehicle driver
. . . with a view to electronic payment and a credit memory 220. EX1007, 2:64
3:2. The estimated cost for the transportation to a particular destination is based on
the distance and a rate per kilometer. Id., 7:4753. As shown in figure 10, the
driver presses on a key, at step 332, in order to indicate to the pedestrian the price
of the shared kilometer and [t]he reader displays this price on the display 236.
Id.
52
IPR2017-01865 Petition
Patent 5,973,619
Grasset discloses that a consumer may select a destination from a map with
regions, which are each associated with a code and displayed on a display of
Paris may be partitioned into twenty parts corresponding to the twenty districts of
EX1007, figure 5.
To the extent that the map with geographic zones in Grasset is not
select a destination from listed destinations. In particular, Wendt discloses the use
points on the map corresponding to various stations. EX1012, 218. A map with
53
IPR2017-01865 Petition
Patent 5,973,619
with a map that graphically illustrates stations as disclosed by Wendt would make
relevant sections from Grasset and Wendt regarding claim 1pre-2 and listed
54
IPR2017-01865 Petition
Patent 5,973,619
Wendt discloses:
As shown in FIG. 2, each station 25 has a
destination selector 10 exhibiting a map of the
system and bearing pushbutton switches 32 at
points on the map corresponding to the other
stations. This selector 10 works in a coder/decoder
and register 11 which is connected via the
associated communication channel 3 to the central
office 26. A fare collector 16 and a ticket dispenser
13 are controlled by selector 10, the dispenser
issuing a ticket only upon insertion of one or more
coins or tokens (in an amount displayed by the
collector on instruction from the selector) or
presentation of a pass to a scanner not shown. An
answer-back unit 14 (e.g. an illuminated sign)
reports the arrival, from the central office, of a
signal confirming the processing of the destination
selection by the computer 1; if this signal is not
forthcoming, the prospective rider may press a
button on selector 10 to cancel the booking made
and to recover his fare, such cancellation being
prevented by the reception of the answer-back
signal in register 11. A signal from the computer,
also stored in that register, operates an indicator 12
to display the expected time of arrival of the next
vehicle headed for the selected destination or,
possibly, for an intermediate transfer point.
EX1008, 3:2557.
Figure 2 of Wendt is provided below:
55
IPR2017-01865 Petition
Patent 5,973,619
Id., figure 2.
destination wanted, and in the event of a match between the data related to a trip
wanted by a consumer and a trip being undertaken by a vehicle then the driver
exchange of coded data on the location of the pick-up of the pedestrian by the
vehicle and possibly as to the identity of the pedestrian, the vehicle driver and/or
the vehicle. Id., 3:4551. After the exchange, the vehicle is automatically
56
IPR2017-01865 Petition
Patent 5,973,619
dispatched to the pick-up location. Id., 6:4456. Alternatively, after the consumer
receives the offer signal, the pedestrian and the driver of the vehicle may engage in
a direct dialogue by means of microphones 110, 214; transmitters 106, 208; and
receivers 108, 210 to specify the pick-up location. Id., 3:3644. These various
identities exchanged on the display means 112 and 216. Id., 3:5254.
stations served thereby. Additional relevant content from Grasset and Wendt is
particular, Grasset teaches an electronic payment system with cards that are
debited by the amount of the transport and Wendt discloses a payment honoring
system that uses coins and tokens. Id. Some of the relevant content from Grasset
57
IPR2017-01865 Petition
Patent 5,973,619
EX1007, Figure 2.
Grasset also discloses:
[T]o permit access to the debit file of the card of
the pedestrian the driver presses the validation key
at step 386. The card 120 of the pedestrian is then
debited by the amount of the transport.
EX1007, 8:5055.
Grasset additionally discloses:
The driver can obtain payment for the value
contained in the credit memory of his card 232
from central bodies supplying these cards.
Id., 9:5964.
Wendt discloses:
58
IPR2017-01865 Petition
Patent 5,973,619
to claim 1-pre3, Grasset discloses that a pedestrian, the operator of the computer,
sends a request for a ride and is matched with a driver. Grasset teaches that each
driver is authorized because each driver must use a card that provides the drivers
identity, a code number, and the identity of the drivers vehicle and that the card
owners must periodically visit a central office to update or verify the information
on the cards. EX1007, 4:595:6. The pedestrian may select from a group of
drivers by opting to accept another offer for a ride from a different driver after a
dialogue with a first driver. EX1012, 222225. The list of authorized drivers
may thus be sequentially displayed. Id. It would have been further obvious to
simultaneously list some of the drivers so that the pedestrian could select from
among the drivers based on a variety of factors such as cost and proximity. Id.
Some of the relevant sections from Grasset regarding claim 1a are cited below.
59
IPR2017-01865 Petition
Patent 5,973,619
Additional relevant sections from Grasset and Wendt are recited with respect to
Claim 1a Grasset
(1) displaying a list of Grasset discloses:
authorized The display means 112, 216 provided on the
transportation transmitter/receiver means 100, 200 may be
companies for selection provided to display the destination requested by
by the operator of the the pedestrian and/or the location of the pedestrian
computer; and/or of the vehicle as well as, if needs be, the
identity of the pedestrian and of the vehicle.
EX1007, 9:2833.
Grasset additionally discloses:
A larger number of carriers may then receive the
shared route request transmitted by the pedestrian.
. . . [T]he cards 120 and 232 make it possible to
exchange and to check the identities of the
pedestrians, of the vehicle drivers and of the
vehicles and to carry out all the payment
operations. . . . the card comprises, on its face, the
identity of its owner, namely his name, and his
forename, as well as a code number. Moreover,
the card comprises, in a security area, the identity
of the owner of the card. In the case of a card held
by a vehicle driver, the card 232 further contains
information relating to the identity of the vehicle.
Id., 4:525:6.
indicates that a consumer may indicate the number of passengers that will travel in
60
IPR2017-01865 Petition
Patent 5,973,619
has free space. EX1008, 4:6364. The stations have ticket dispensers or other
passenger-operated devices which supply the central computer with data on the
number of persons waiting at each stop and on their destinations. Id., 1:4552.
modify Grasset to prompt the consumer to enter the number of passengers needing
a ride. EX1012, 226228. Some of relevant sections from Grasset and Wendt
regarding claim 1-pre2, Grasset discloses that a consumer may select a destination
61
IPR2017-01865 Petition
Patent 5,973,619
from a map with graphically illustrated destinations such as regions or large built-
53; see also 4:513; 5:1923. To the extent that Grasset is not considered to
teachings of Grasset and Wendt would have made it obvious to a POSA to feature
229231. Some of the relevant content from Wendt regarding claim 1c are cited
below.
Claim 1c Wendt
(3) Wendt discloses:
graphically As shown in FIG. 2, each station 25 has a destination selector
illustrating 10 exhibiting a map of the system and bearing pushbutton
destination switches 32 at points on the map corresponding to the other
locations; stations. This selector 10 works in a coder/decoder and register
11 which is connected via the associated communication
channel 3 to the central office 26.
EX1008, 3:2531.
62
IPR2017-01865 Petition
Patent 5,973,619
Id., figure 2.
Claim 1d: (4) displaying the approximate fare for the number
of passengers promoted to a selected destination
and types of payment options honored by said
selected company;
with respect to claim 1b, it would have been obvious to a POSA to modify Grasset
to prompt the consumer to enter the number of passengers needing a ride based on
in vehicles, such as taxis, to determine whether a vehicle has free space. Further,
EX1007, 7:4043, 7:4755, 7:658:6, 9:2833, and 9:5658. These cited sections
of Grasset disclose an electronic payment system with cards that are debited by the
63
IPR2017-01865 Petition
Patent 5,973,619
Additionally, Wendt uses a fare collector that displays the amount due for
tokens. EX1008, 3:2557. Grasset could be modified to accept tokens, like Wendt,
Based on the combined teachings of Grasset and Wendt, it would have been
obvious to a POSA to display the approximate fare for the number of passengers
EX1012, 232235.
64
IPR2017-01865 Petition
Patent 5,973,619
65
IPR2017-01865 Petition
Patent 5,973,619
Id., figure 2.
with respect to claims 1pre-3 and 1a, Grasset and Wendt disclose systems for
requested by a consumers request signal and in the event of a match between the
vehicle then the driver transmits a pick-up offer signal. Id. A vehicle may also be
66
IPR2017-01865 Petition
Patent 5,973,619
indicates that the vehicles in its system may be any vehicles while Wendt relates to
discloses that a dispatch call is initiated in its system when a consumer purchases a
Grasset and Wendt recited above with respect to claims 1pre-3 and 1a, additional
67
IPR2017-01865 Petition
Patent 5,973,619
Claim 1f: (6) estimate the approximate arrival time for said
dispatched taxi.
above at claims 1-pre2, 1-pre3, 1a, and 1e, Grasset discloses a method for a
vehicle. EX1007, 6:1341. Grasset discloses the use of a system to determine the
distance between the driver and the consumer and the time may be estimated based
on the distance. Id., 10:1021. Additionally, Grasset enables the consumer and
the driver to discuss the estimated time. EX1012, 241. To the extent that the
teachings of Grasset are not considered sufficient with respect to claim 1e, Wendt
specifically teaches that its system displays the expected time of arrival of the
dispatched taxi. Some of the relevant sections from Grasset and Wendt regarding
68
IPR2017-01865 Petition
Patent 5,973,619
Grasset and Wendt render obvious claim 7, which depends from claim 1 and
establishes that it would have been obvious based on the combination of Grasset
and Wendt to display the fare, number of passengers, and the selected destination.
It would also have been obvious based on Grasset to display the transportation
69
IPR2017-01865 Petition
Patent 5,973,619
company because Grasset indicates that [t]hese various exchanges can, if needs be,
be facilitated by the display of . . . the identities exchanged on the display means 112
and 216. EX1007, 3:4954. Because the identities are exchanged, the consumer can
view a display with the identity of the driver, which is the same as the transportation
that the drivers display 236 comprises two lines of sixteen LCD alphanumeric
characters making it possible to display the data inserted by the driver so that he can
either check if any input error has been committed or correct if an input error has
been committed. EX1007, 5:3944. Like the drivers display 236, the pedestrians
A POSA would have found it obvious and would have been motivated to
combine the teachings of Grasset with the teachings of Wendt to arrive at the
combine Wendt with Grasset to improve some of the features of Grasset. For
70
IPR2017-01865 Petition
Patent 5,973,619
computer to calculate arrival times, which are provided to the consumers. EX1008,
each vehicles speed to display accurate arrival times to the pedestrians and the
and the pedestrian to the driver for estimating the arrival time based on the speed of
the vehicle. EX1008, 10:1021; EX1012, 245. This improvement, which was
readily available, would ensure a consumer is present and ready when the vehicle
Wendt. Additionally, each claim, when considered as a whole would have been
Overviews of Grasset and Wendt are provided above with respect to Ground
71
IPR2017-01865 Petition
Patent 5,973,619
Grasset, Wendt, and Behr render obvious claim 2, which recites wherein
EX1012, 247248. The phrase said instruction messages refers to the phrase
in the preamble of claim 1 which indicates that the instructional messages relate to
private transportation companies and estimated costs for hiring said transportation
such as taxis, a POSA would expect the system to be used by visitors speaking
reader 234 may be designed to recognize and convert different currencies, display
their conversion rates, memorize and allow digital modification of the memorized
currency, a POSA would have been motivated to further modify the system of
system of Behr. EX1012, 248. The system in Behr enables a language query to
request a list of available languages for display of information at the mobile unit
72
IPR2017-01865 Petition
Patent 5,973,619
Grasset, Wendt, and Behr. Also, claim 2, when considered as a whole would have
been obvious based on the combination of Grasset, Wendt, and Behr. EX1012,
247248.
A POSA would have found it obvious and been motivated to combine the
teachings of Grasset and Wendt with the teachings of Behr to arrive at the claimed
invention. EX1012, 249. The combination rationale for Grasset and Wendt
provides a system for transporting pedestrians in cities such as Paris and provides
for currency conversions because the pedestrians would include visitors from other
would have been advantageous for the system of Grasset to be modified with the
1. Overview of DeLorme
that determines a travel route between a user selected travel origin and travel
73
IPR2017-01865 Petition
Patent 5,973,619
user along the travel route. Id. The system presents a user-customized travelog for
preview on the computer display of the user defined travel route. Id. The travel
plan can also be previewed in printed form as shown in figure 1N, provided below.
74
IPR2017-01865 Petition
Patent 5,973,619
Grasset, Wendt, and DeLorme render obvious claim 3, which depends from
claim 1 and recites wherein said destination locations selected on said computer
[t]he display means 112, 216 provided on the transmitter/receiver means 100, 200
illuminated so that the pedestrian will be able to see the text on the LCD screen
making it possible to display the data to check if any input error has been
To the extent that Grasset is not considered to disclose that the destination
discloses that [t]he user can engage in manual input of individual POIs by
clicking at points, symbols or place names on the map display. EX1009, 16:13
15. Further, DeLorme discloses that the system permits the user to locate, click
develop his or her individual travel plan. Id., 5:5254; see also 10:5154. It
would thus have been obvious to a POSA to modify Grasset with the specific
75
IPR2017-01865 Petition
Patent 5,973,619
254.
location 124 on a digital map that is marked with an X and then displaying
additional information about the lakeside location 124. EX1009, figure 1A and
14:4615:6.
76
IPR2017-01865 Petition
Patent 5,973,619
DeLorme states
Id., 10:5911:6.
words or symbols along a displayed route on the underlying digital map screen
122, by selection from a list of place names or from a list of types of locations, or
77
IPR2017-01865 Petition
Patent 5,973,619
Grasset, Wendt, and DeLorme render obvious claim 5, which depends from
cities, municipalities, and settlements, it would have been obvious to a POSA for a
Grasset, Wendt, and DeLorme render obvious claim 5, which depends from
includes an enlarged map with streets names and directions to said locations.
showing use of an enlarged map with street names and directions to a destination.
78
IPR2017-01865 Petition
Patent 5,973,619
output including a list of waypoints, routes, compass directions, nearby town, time
and distance estimates for route segments and the overall route. EX1009, 17:13
A POSA would have found it obvious and would have been motivated to
combine the teachings of Grasset and Wendt with the teachings of DeLorme.
79
IPR2017-01865 Petition
Patent 5,973,619
EX1012, 267270. Grasset indicates that the location of the pedestrian and thus
the effectiveness of the matching are optimized by the fineness of the geographical
grid pattern, whereby the potential for shareable routes increases. EX1007, 10:54
60. A POSA would have been motivated to replace the grid pattern of Grasset with
Figure 1C reveals the basic user interface, which provides a main electronic
map display with more detail including geometric symbols in small rectangles
under "Seattle" for example. Id., 12:5761. These symbols represent the
80
IPR2017-01865 Petition
Patent 5,973,619
whole would have been obvious based on the combination of Grasset and Wendt.
EX1012, 267270.
IX. CONCLUSION
Respectfully Submitted,
/Kevin Laurence /
Kevin Laurence
Registration No. 38,219
Jonathan Stroud
Registration No. 72,518
Matthew Phillips
Registration No. 43,403
81
WORD-COUNT CERTIFICATE OF COMPLIANCE
because it contains 13,974 words excluding the parts of the petition exempted by
37 C.F.R. 42.24(a)(1), the cover page, and the signature block. This word count
was determined by the word count tool of the Microsoft Office Word 2010 word-
Respectfully submitted,
1
CERTIFICATE OF SERVICE
Petition for Inter Partes Review of U.S. Patent No. 5,973,619 under
35 U.S.C. 312 and 37 C.F.R. 42.104
Exhibit List
Exhibits for Petition for Inter Partes Review of U.S. Patent No.
5,973,619 (EX10011025)
Power of Attorney
Word Count Certification Under 37 CFR 42.24(d)
on the Patent Owner for next day delivery at the correspondence address of record
Respectfully submitted,