UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD UBER TECHNOLOGIES, INC. Petitioner v. X ONE, INC. Patent Owner Case: Unassigned Patent 8,798, DECLARATION OF CHRIS G. BARTONE, PH.D., P.E. REGARDING U.S. PATENT NO. 8,798,647 Petitioner Uber Technologies, Inc. Exhibit 1003, p. 1

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3 TABLE OF CONTENTS Table of Contents I. Introductionn A. Engagement B. Background and Qualifications C. Compensation D. Information Considered II. Legal Standards III. The Challenged Patent A. Background B. Prosecution History IV. Level Of Ordinary Skill In The Art V. Claim Interpretation A. responsive to launching an application (claims 1 and 28) / in association with an application launched (claim 22) B. use-specific group (claims 1, 22, and 28) VI. Prior Art References A. Japanese Unexamine ed Patent Application n Publication to Yoshichika Konishi ( Konishi ) B. Japanese Unexamine ed Patent Application n Publication to Mitsuoka ( Mitsuoka ) C. Japanese Unexamine ed Patent Application n Publication to Saito Makoto ( Makoto ) D. U.S. Patent No. 6,714,797 to Rautila ( Rautila ) E. U.S. Patent No. 6,658,260 to Knotts ( Knotts ) F. U.S. Patent No. 6,925,381 to Adamczyk ( Adamczyk ) VII. GROUND 1: Konishii Renders Claims 1, 5-7, 10-11,, 22-23, 28, 32-33, 36-37, and Obvious A. Claim A method of tracking proximity of position associated with a first wireless device relative to a position of a second wireless device, wherein one Petitioner Uber Technologies, Inc. Exhibit 1003, p. 3

4 of the first wireless device and the second wireless device is associated with a provider of a desired service and the other off the first wireless device and the second wireless device is associated with a requestor of the desired service, the method comprising: causing receipt of information on the first wireless device representing the position of the second wirelesss device and a map associated with the position associated with the first wireless device and the position of second wireless device; causing display of the map on the first wireless device with position associated with the first wireless device and the position of the second wireless device rendered thereon; and causing receipt of information on the first wireless device representing positional update of the second wireless device, and causing update of display of the map on the first wireless device with the position associated with the first wireless device and updated position off the second wireless device rendered thereon; wherein the causing of the update is too be performed to indicate proximity of and direction between position of the provider of the desired service and position associated with the requestor of the desired service; wherein the method is invoked responsive to launching an application on the first wireless device in connection with a request from the requestorr for the desired service; and wherein the provider is selected in connection with the request for the desired service and the method further comprises forming a use-specific group to have the first wirelesss device and the second wireless device in connection with the request for the desired service B. Claim A method of tracking proximity of position associated with a first wireless device relative to position of a second wireless device, wherein the first wireless device is associated with a requestor of a desired service and the second wireless device is associated with a provider off the desired service, the method comprising: selecting the provider of the desired service in association with an application launched by the requestor on thee first wireless device, wherein the second wireless device is associated with thee provider and is thereby selected in associated with launch of the application; Petitioner Uber Technologies, Inc. Exhibit 1003, p. 4

5 3. causing receipt of information on the first wireless device representing position of the provider, dependent on global positioning system (GPS) position data provided by the second wireless device, and receipt of information representing a map associated with the position associated with the first wireless device and the position of the second wireless device; causing display of the map on the first wireless device with the position associated with the requestor and the position of the second wireless devicee rendered thereon; and causing receipt of information on the first wireless device representing intermittent positional update dependent on GPS position data provided by the second wireless device, and causing update of display of the map on the firstt wireless device with respective position associated with the first wireless device and positional update dependent on the GPS position data provided by the second wireless device rendered thereon; wherein selecting the provider of the desired service includes forming a use-specific group to have the first wireless device and the second wirelesss device in connection with the request for thee desired service C. Claim An apparatus comprising instructions stored on non-transitory machine- readable media, the instructions when executed operable to:" cause receipt of informationn on the first wirelesss device representing position of the second wireless device and a map associated with position associated with the first wireless device and the position of the second wireless device; cause display of the map on the first wireless device with the position association with the first wireless device andd the position of the second wireless device renderedd thereon; and cause receipt of informationn on the first wirelesss device representing positional update of the second wireless device, and cause update of display of the map on the first wireless device with the position associated with the first wireless device and updated position of the second wireless device rendered thereon; wherein one of the first wireless device and the second wireless device is associated with a provider of a desired service, Petitioner Uber Technologies, Inc. Exhibit 1003, p. 5

6 6. wherein the update of the display is too performed to indicate proximity of and direction between the provider of the desired service and a position associated with a requestor of the desired service, wherein the causing of the receipt of the information representing the position, the causing of the display, and the causing off the receipt of information representing positional update are invoked responsive to launching an application on the first wirelesss device in connection with a request by the requestor for the desiredd service, wherein the provider is selected in connection with the request for the desired service, wherein the instructions when executed are to cause formation of a use-specific group to have the first wireless devicee and the second wireless device in connection with the request for the desired service D. Claims 5, 23, and E. Claims 7 and F. Claims 10 And G. Claims 11 And H. Claim the requestor is associated with the first wirelesss device and the provider is associated with the second wireless device; the apparatus is embodied as instructions stored on non-transitory memory of the first wireless device and further comprise instructions that when executed are operable to launch an application on the first wireless device in association with a request by the requestor for the desired service; the provider and the second wireless device are selected in association with the request by the requestor for the desired service; the instructions when executed are operable to generate the display in a manner operable to convey to the requestor cartographic location of the provider as a prelude to rendering the desiredd service I. Claim VIII. GROUND 2: Konishii and Rautila Render Claims 1, 4-5, 7, 10-11, 22-23, 28, 31, 33, 36-37, And Obvious A. Claims 1, 5-7, 10-11, 22-23, 28, 32-33, 36-37, and B. Claims 4 and IX. GROUND 3: Konishii and Adamczyk Render Claims 6, 24, and 32 Obvious 92 Petitioner Uber Technologies, Inc. Exhibit 1003, p. 6

7 A. Claims 6, 24, and X. GROUND 4: Konishii and Makoto Renderr Claims 8,, 9, 25, 34, 35, and 45 Obvious A. B. C. XI. A. Claims 8, 25, and Claims 9 and Claim GROUND 5: Konishii and Knotts Render Claims 13,, 27, and 39 Obvious 100 Claims 13, 27, and XII. GROUND 6: Mitsuoka Renders Claims 1,, 5-7, 10-11, 22-24, 28, 32-33, 36-37, And Obvious A. Claim A method of tracking proximity of position associated with a first wireless device relative to a position of a second wireless device, wherein one of the first wireless device and the second wireless device is associated with a provider of a desired service and the other off the first wireless device and the second wireless device is associated with a requestor of the desired service, the method comprising: causing receipt of information on the first wireless device representing the position of the second wirelesss device and a map associated with the position associated with the first wireless device and the position of second wireless device; causing display of the map on the first wireless device with position associated with the first wireless device and the position of the second wireless device rendered thereon; and causing receipt of information on the first wireless device representing positional update of the second wireless device, and causing update of display of the map on the first wireless device with the position associated with the first wireless device and updated position off the second wireless device rendered thereon; wherein the causing of the update is too be performed to indicate proximity of and direction between position of the provider of the desired service and position associated with the requestor of the desired service; wherein the method is invoked responsive to launching an application on the first wireless device in connection with a request from the requestorr for the desired service; and Petitioner Uber Technologies, Inc. Exhibit 1003, p. 7

8 7. wherein the provider is selected in connection with the request for the desired service and the method further comprises forming a use-specific group to have the first wirelesss device and the second wireless device in connection with the request for the desired service B. Claim A method of tracking proximity of position associated with a first wireless device relative to position of a second wireless device, wherein the first wireless device is associated with a requestor of a desired service and the second wireless device is associated with a provider off the desired service, the method comprising: selecting the provider of the desired service in association with an application launched by the requestor on thee first wireless device, wherein the second wireless device is associated with thee provider and is thereby selected in associated with launch of the application; causing receipt of information on the first wireless device representing position of the provider, dependent on global positioning system (GPS) position data provided by the second wireless device, and receipt of information representing a map associated with the position associated with the first wireless device and the position of the second wireless device; causing display of the map on the first wireless device with the position associated with the requestor and the position of the second wireless devicee rendered thereon; and causing receipt of information on the first wireless device representing intermittent positional update dependent on GPS position data provided by the second wireless device, and causing update of display of the map on the firstt wireless device with respective position associated with the first wireless device and positional update dependent on the GPS position data provided by the second wireless device rendered thereon; wherein selecting the provider of the desired service includes forming a use-specific group to have the first wireless device and the second wirelesss device in connection with the request for thee desired service C. Claim D. Claims 5, 23, and E. Claims 6, 24, and F. Claims 7 and Petitioner Uber Technologies, Inc. Exhibit 1003, p. 8

9 G. Claims 10 And H. Claims 11 And I. Claim the requestor is associated with the first wirelesss device and the provider is associated with the second wireless device; the apparatus is embodied as instructions stored on non-transitory memory of the first wireless device and further comprise instructions that when executed are operable to launch an application on the first wireless device in association with a request by the requestor for the desired service; the provider and the second wireless device are selected in association with the request by the requestor for the desired service; the instructions when executed are operable to generate the display in a manner operable to convey to the requestor cartographic location of the provider as a prelude to rendering the desiredd service J. Claim XIII. GROUND 7: Mitsuoka and Rautila Render Claims 1, 4-7, 10-11, 22-24, 28, 31-33, 36-37, and Obvious A. Claims 1, 5-7, 10-11, 22-24, 28, 32-33, 36-37, and B. Claims 4 and XIV. GROUND 8: Mitsuoka and Makoto Render Claims 8, 9, 25, 34, 35, and 45 Obvious A. Claims 8, 25, and B. Claims 9 and C. Claim XV. GROUND 9: Mitsuoka, Konishi, and Knotts Renderr Claims 13, 27, and 39 Obvious XVI. Conclusion n XVII. Appendix A: Materials Considered By Chris G. Bartone, Ph.D., P.E Petitioner Uber Technologies, Inc. Exhibit 1003, p. 9

10 I. INTRODUCTION A. Engagement 1. I have been retained by Uber Technologies, Inc. ( Uber or petitioner ) as an expert witness in the above-captioned proceeding. I have been asked to provide my opinions about the state of the art of the technology described in U.S. Patent No. 8,798,647 to Richard D. Haney ( the 647 patent or the challenged patent ) (UBER-1001). I also have been asked to provide my technical expertise and opinions regarding the teachings of various prior art references that form the basis of grounds of invalidity in an accompanying petition for inter partes review of the 647 patent. The following is my written report on these topics. B. Background and Qualifications 2. My Curriculum Vitae is submitted herewith as UBER I am a professor of electrical engineering at Ohio University. 4. In 1983, I received my B.S. in electrical engineering from The Pennsylvania State University. In 1987, I received my M.S. in electrical engineering from the Naval Postgraduate School specializing in communication systems. In 1998, I received my Ph.D. in electrical engineering from Ohio University with a specialization in electronic navigation, GPS, electromagnetics, and antennas. In the Fall of 1998 I was awarded the RTCA William E. Jackson Petitioner Uber Technologies, Inc. Exhibit 1003, p. 10

11 Award for my outstanding Ph.D. dissertation involving differential GPS. I am a licensed professional engineer in the state of Ohio, since I have extensive experience working with wireless communication, navigation and surveillance systems, including GPS and location-based services. I joined Ohio University as a Visiting Assistant Professor in 1998 and became an Assistant Professor in In 2004, I became an Associate Professor, and in 2009, I became a Professor. 6. A complete listing of electrical of electrical engineering courses I have taught at Ohio University are listed in my CV. They include the following: EE605/6053 Satellite-Based Navigation Systems, F00-01, F01-02, F03-04, W04-05, F06-07, F07-08, F08-09, F09-10, F10-11, F11-12, F S14-15, S EE441/541/4403/5403 Antennas and Microwaves Theory, W98-99, S12-13, S13-14, S14-15, S EE6900 Satellite Communications, F13-14, F EE613/690 High-Accuracy Satellite Navigation Systems, S00-01, S01-02, W03-04, S06-07, W07-08, W08-09, W09-10, S10-11, S EE601/690, Electromagnetic Wave Propagation in Electronic Navigation Systems, F99-00, F Petitioner Uber Technologies, Inc. Exhibit 1003, p. 11

12 EE690 Satellite Navigation Systems for Automobiles Seminar (Independent Study), S I am named as an author on approximately 89 professional publications including 11 refereed journal papers, 15 refereed conference/magazine publications, 42 conference papers, 11 patent applications (1 awarded), and 13 technical reports. 8. A sampling of projects I have researched includes the following: Integrated Avionics Technology Development, Federal Aviation Administration. Joint University Program between MIT, Princeton, and Ohio University. Grant 10-G-018, and then Grant 16-G-012. Recent work has concentrated on Avian Radar target processing to support Automatic Dependent Surveillance Systems Broadcast (ADS-B). Traffic Information System-Broadcast (TIS-B) and Flight Information System-Broadcast (FIS-B) messaging over Universal Access Transceiver (UAT) and 1090Extended Squitter (1090ES). Principle Investigator for this task. Differential Global Positioning System (GPS) Performance Analysis task for Northrop-Grumman Corporation, El Segundo, CA for engineering services and white paper. 2/27/2009 to 6/12/2009. Principle Investigator for this task. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 12

13 GPS Long Range Navigation (LORAN)-C Analysis and Support, sponsored by the FAA, Contract: DTFA01-01-C-00071, Technical Task Description 2.1, 10/1/07 to 12/30/07; new work from 1/1/08 to 09/26/08, then with contract extension to 04/30/09. I am the Principle Investigator for Loran-C support to FAA on all aspects. Coordinate all development including King Air flight tests, Loran Propagation Model (LPM) development and validation, ASF measurement and validation studies, legacy performance assessments for GPS nonprecision approach, H-field antenna specification. Development of a Prototype NDGPS High Performance Architecture Enhancement. Lead agency was the U.S. Department of Transportation (DOT) Federal Railroad Administration (FRA) funded through DOT/Volpe Center. Contract DTRS57-04-C with options from 03/30/04 to 10/20/07. I was the Principle Investigator for this development. Analysis and Evaluation on Impact of the Wide Area Augmentation System (WAAS) to GPS on Maritime Radio Navigation Users, from Volpe. Contract DTRT57-05-P from 6/17/05-3/17/06. I was the Principle Investigator for all development and research efforts. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 13

14 9. In addition to my work as a professor, I also have significant experience as a consultant working with wireless communication, navigation and surveillance systems, including GPS and location-based services. I am president of GNSS Solutions Ltd., a GPS and graphical-data software consulting firm founded in 2006, specializing in technical seminars, technical expert legal support, and engineering services in the communications, navigation and surveillance areas. 10. I also am the co-author of the textbook, Global Navigation Satellite Systems, Inertial Navigation, and Integration, 3rd Edition, John Wiley & Sons, C. Compensation 11. I am being compensated at my standard hourly rate for my study and testimony in this matter. I am also being reimbursed for reasonable and customary expenses associated with my work and testimony in this investigation. My compensation is not contingent on the outcome of this matter or the specifics of my testimony. D. Information Considered 12. My opinions are based on my years of education, research and experience, as well as my investigation and study of relevant materials. In forming my opinions, I have also considered the materials listed in Appendix A. II. LEGAL STANDARDS Petitioner Uber Technologies, Inc. Exhibit 1003, p. 14

15 13. In expressing my opinions and considering the subject matter of the claims of the challenged patent, I am relying upon certain basic legal principles that counsel has explained to me. 14. First, I understand that for an invention claimed in a patent to be found patentable, it must be, among other things, new and not obvious from what was known before the invention was made. 15. I understand the information that is used to evaluate whether an invention is new and not obvious is generally referred to as prior art and generally includes patents and printed publications (e.g., books, journal publications, articles on websites, product manuals, etc.). 16. I understand that in this proceeding that petitioner has the burden of proving that the claims of the challenged patent are anticipated by or are obvious from the prior art by a preponderance of the evidence. I understand that a preponderance of the evidence is evidence sufficient to show that a fact is more likely true than not. 17. I understand that in this proceeding, the claims must be given their broadest reasonable interpretation consistent with the specification and the prosecution history. The claims, after being construed in this manner, are then to be compared to the information in the prior art. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 15

16 18. I understand that in this proceeding, the information that may be evaluated is limited to patents and printed publications. My analysis below compares the claims to patents and printed publications that are prior art to the claims. 19. I understand that there are two ways in which prior art may render a patent claim unpatentable. First, the prior art can be shown to anticipate the claim. Second, the prior art can be shown to make the claim obvious to a person of ordinary skill in the art. My understanding of the two legal standards is set forth below. 20. I understand that a claimed invention is not patentable if it would have been obvious to a person of ordinary skill in the field of the invention at the time the invention was made. 21. I understand that the obviousness standard is defined in the patent statute (35 U.S.C. 103(a)) as follows: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 16

17 22. I understand that the following standards govern the determination of whether a claim in a patent is obvious. I have applied these standards in my evaluation of whether the challenged claims would have been considered obvious at the time of the effective filing date of the challenged patent. I have been instructed to consider April 4, 2005 to be the effective filing date of the challenged patent. 23. I understand that to find a claim in a patent obvious, one must make certain findings regarding the claimed invention and the prior art. Specifically, I understand that the obviousness question requires consideration of four factors (although not necessarily in the following order): The scope and content of the prior art; The differences between the prior art and the claims at issue; The knowledge of a person of ordinary skill in the pertinent art; and Whatever objective factors indicating obviousness or non-obviousness may be present in any particular case. 24. In addition, I understand that the obviousness inquiry should not be done in hindsight, but must be done using the perspective of a person of ordinary skill in the relevant art as of the effective filing date of the patent claim. 25. I understand the objective factors indicating obviousness or nonobviousness may include: commercial success of products covered by the patent Petitioner Uber Technologies, Inc. Exhibit 1003, p. 17

18 claims; a long-felt need for the invention; failed attempts by others to make the invention; copying of the invention by others in the field; unexpected results achieved by the invention; praise of the invention by the infringer or others in the field; the taking of licenses under the patent by others; expressions of surprise by experts and those skilled in the art at the making of the invention; and the patentee proceeded contrary to the accepted wisdom of the prior art. 26. I understand the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. I also understand that an example of a solution in one field of endeavor may make that solution obvious in another related field. I also understand that market demands or design considerations may prompt variations of a prior art system or process, either in the same field or a different one, and that these variations will ordinarily be considered obvious variations of what has been described in the prior art. 27. I also understand that if a person of ordinary skill can implement a predictable variation, that variation would have been considered obvious. I understand that for similar reasons, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using that technique to improve the other Petitioner Uber Technologies, Inc. Exhibit 1003, p. 18

19 device would have been obvious unless its actual application yields unexpected results or challenges in implementation. 28. I understand that the obviousness analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, but instead can take account of the ordinary innovation and experimentation that does no more than yield predictable results, which are inferences and creative steps that a person of ordinary skill in the art would employ. 29. I understand that sometimes it will be necessary to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art. I understand that all these issues may be considered to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. 30. I understand that the obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation. I understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v. Teleflex, Inc. where the Court rejected the previous requirement of a teaching, suggestion, or motivation to combine known elements of prior art for purposes of an obviousness analysis as a precondition for finding obviousness. It is my understanding that KSR confirms that any motivation that would have been known Petitioner Uber Technologies, Inc. Exhibit 1003, p. 19

20 to a person of skill in the art, including common sense, or derived from the nature of the problem to be solved, is sufficient to explain why references would have been combined. 31. I understand that a person of ordinary skill attempting to solve a problem will not be led only to those elements of prior art designed to solve the same problem. I understand that under the KSR standard, steps suggested by common sense are important and should be considered. Common sense teaches that familiar items may have obvious uses beyond the particular application being described in a reference, that if something can be done once it is obvious to do it multiple times, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. As such, the prior art considered can be directed to any need or problem known in the field of endeavor in April of 2005 and can provide a reason for combining the elements of the prior art in the manner claimed. In other words, the prior art does not need to be directed towards solving the same problem that is addressed in the patent. Further, the individual prior art references themselves need not all be directed towards solving the same problem. 32. I understand that an invention that might be considered an obvious variation or modification of the prior art may be considered non-obvious if one or more prior art references discourages or lead away from the line of inquiry Petitioner Uber Technologies, Inc. Exhibit 1003, p. 20

21 disclosed in the reference(s). I understand that a reference does not teach away from an invention simply because the reference suggests that another embodiment of the invention is better or preferred. My understanding of the doctrine of teaching away requires a clear indication that the combination should not be attempted (e.g., because it would not work) or explicit statements saying the combination should not be made. 33. I understand that a person of ordinary skill is also a person of ordinary creativity. III. THE CHALLENGED PATENT A. Background 34. The 647 patent describes software to be installed on existing cell phones and other wireless devices (UBER :20-27, 2:44-50) to allow mutual tracking and optional position mapping displays of members of groups. (UBER :33-39.) 35. The 647 patent purports to overcome drawbacks of prior art location sharing services such as OnStar and Mercedes Benz TeleAid. According to the inventor, those prior art services did not allow for the two-way exchange of location information (UBER :30-31), or provide a system for use by motorists to allow them to be able to contact rescuers and know the location of the rescuers as they come to the aid of the stranded person and to allow the Petitioner Uber Technologies, Inc. Exhibit 1003, p. 21

22 rescuers to know the location of the victims they are trying to rescue. (Id. 1:42-46.) The inventor believed that known prior art services did not provide a mechanism to add groups and members of groups (Id. 1:62-63.) 36. The patent contemplates the use of Java enabled, web enabled (or similar) cell phones and Personal Digital Assistants or other web enabled wireless products with global positioning system (GPS) receivers and sufficiently large liquid crystal displays for the preferred embodiment. (UBER :20-25.) The patent requires that such phones must be web enabled to be able to send and receive TCP/IP or other protocol packets over the internet to the Buddy Watch server. (UBER :25-27.) Thus, the patent discloses using mobile phones that already have the capability to run applications and all necessary hardware for a location and mapping system. The patent explains that its system does not require development of new cell phone or PDA technology nor the development of new cellular communication infrastructure. (UBER :44-48.) 37. The patent also discloses that maps could be retrieved from map providers such as MapQuest (UBER :13-15, 14:17-20, 24:61-65) or Yahoo (UBER :64-23:1) and used with known cell phone technology to display the respective locations of multiple cell phones in a group. The patent explains that Figure 16, shown below, is a block diagram of a typical cellular system coupled by a gateway and a Wide Area Network such as the internet to a Buddy Petitioner Uber Technologies, Inc. Exhibit 1003, p. 22

23 Watch server to provide the infrastructure of the invention. (UBER :47-50.) 38. The patent discloses using the tracking capabilities built into cell phones and existing communication infrastructure, including using it to allow a user with a cell phone to set up an instant buddy relationship with tow truck drivers. (UBER :26-58.) The patent discloses that when a user s car breaks down, the user can dial a tow truck driver s phone and request to be an instant buddy of the tow truck driver s phone. (UBER :29-33.) After both phones are set up as instant buddies, each phone shows the location of the other phone on its moving map. (UBER :29-33.) B. Prosecution History Petitioner Uber Technologies, Inc. Exhibit 1003, p. 23

24 39. I understand that the application that issued as the 647 patent was filed on October 15, 2013 with 37 claims. (UBER-1002 pp ) During prosecution of the application that issued as the 647 patent, I understand that the Examiner issued a single office action on December 3, 2013 rejecting all 37 claims as obvious. (UBER-1002 pp ) In addition, the applicant amended the claims (UBER-1002 pp ), added new claims (UBER-1002 pp ), presented arguments characterizing the invention (UBER-1002 pp ), and argued that the prior art did not disclose the amended claims (UBER-1002 pp ) I understand that the Examiner then allowed the claims to issue. (UBER pp ) IV. LEVEL OF ORDINARY SKILL IN THE ART 40. I understand that a person of ordinary skill in the art is a hypothetical person who is presumed to be aware of all pertinent prior art, thinks along conventional wisdom in the art, and is a person of ordinary creativity. With respect to the 647 patent, I believe that a person of ordinary skill would have had at least a four-year degree in electrical engineering, computer science, or a related field of study, or equivalent experience, and at least two years of experience in or with mobile wireless communications and navigation systems. 41. I am familiar with the knowledge and capabilities of one of ordinary skill in the art. Unless otherwise stated, my testimony below refers to the Petitioner Uber Technologies, Inc. Exhibit 1003, p. 24

25 knowledge of one of ordinary skill in the art as of April 4, 2005, which I understand is the earliest priority claim of the 647 patent. V. CLAIM INTERPRETATION 42. I understand that a claim in inter partes review is given the broadest reasonable interpretation in light of the specification as commonly understood by those of ordinary skill in the art. Unless otherwise noted, I have generally given the claim terms their broadest reasonable construction as understood by a person of ordinary skill in the art at the time of the purported invention. 43. I also understand that, where a patent applicant explicitly defines a term to mean something in the patent disclosure, that definition should be used when evaluating the claims. 44. I understand that the standards used by a district court to interpret the claims are different than those used in this proceeding. The main difference, as I understand it, is that in this proceeding, the claims are to be read as broadly as is reasonable based on the specification. I understand that this may cause the claims to cover certain things that a district court might find are not within the scope of the claims in its proceeding. A. responsive to launching an application (claims 1 and 28) / in association with an application launched (claim 22) 45. Independent claim 1 recites wherein the method is invoked responsive to launching an application. Independent claim 22 recites selecting Petitioner Uber Technologies, Inc. Exhibit 1003, p. 25

26 the provider of the desired service in association with an application launched by a requestor. Independent claim 28 recites that certain claim elements are invoked responsive to launching an application. I have reviewed the specification of the 647 patent, and it uses the term launch only in the context of a user launching the TalkControl application for a walkie-talkie embodiment. (UBER :51-28:40.) The specification does not disclose that any actions are invoked in response to launching the TalkControl application beyond providing the user with the application and allowing the user to scroll and select options. (e.g., UBER :55-57 ( A user who wishes to join a walkie-talkie talk group launches the TalkControl application, scrolls down to Join Group menu option, selects an Enter Tokens option, fills in her name, ), 27:14-18 ( The supervisor launches the TalkControl application program and scrolls down to the add/edit/delete user menu option and logs in as a supervisor and presses send. ).) 46. The specification separately mentions an opening screen of an application, but does not disclose anything being triggered in response to opening the application beyond the user receiving a welcome screen with menu options. (UBER :57-59 ( FIG. 1 is a screen shot of a typical opening screen which would be displayed on a cellphone with the Buddy Tracker software enabled on the phone. ), Figure 1.) A user must then select what they want to do with the application by selecting menu options. Accordingly, it is my opinion that under Petitioner Uber Technologies, Inc. Exhibit 1003, p. 26

27 the broadest reasonable interpretation a person of ordinary skill in the art would understand responsive to launching an application or in association with an application launched to mean that the steps are invoked or selected in association with the running of the application. B. use-specific group (claims 1, 22, and 28) 47. Independent claims 1 and 22 recite forming a use-specific group and independent claim 28 recites to cause formation of a use-specific group. The 647 patent s specification does not use the terms use-specific group or use-specific. When the applicant amended the claims to add the use-specific group term, the applicant also presented arguments to distinguish the prior art references because they purportedly did not disclose two specific devices as members of a group. (UBER-1002 p. 106 ( there is no teaching in Staton that the method identifies two specific devices as members of a use-specific group. ), p. 107 ( Grube does not appear to teach any mechanism for identifying two specific wireless devices as members of a use-specific group. ).) In particular, the applicant distinguished the prior art as not forming a use-specific group because the prior art at issue did not disclose a service requestor and service provider. (UBER-1002 p. 108 ( Grube s GLSS controller does not appear to select a specific service provider or have a mechanism for forming a use-specific group in a manner that has the specific services provider and requestor. ).) Accordingly, Petitioner Uber Technologies, Inc. Exhibit 1003, p. 27

28 under the broadest reasonable interpretation a person of ordinary skill in the art would understand use-specific group to mean a group including a service requestor and a service provider. VI. PRIOR ART REFERENCES 48. I understand that a U.S. patent is a formally published document, and that I may rely on the dates in the patent as to when the patent was filed and when it was granted. I understand that a patent qualifies as prior art if its date of issuance is prior to the invention of the challenged patent. I further understand that a printed publication also qualifies as prior art to a challenged patent if the date of publication is prior to the invention of the challenged patent I understand that a patent qualifies as prior art if its date of issuance is more than one year before the filing date of the challenged patent. I further understand that a printed publication qualifies as prior art to a challenged patent if the date of the publication occurred more than one year before the filing date of the challenged patent. A. Japanese Unexamined Patent Application Publication to Yoshichika Konishi ( Konishi ) 50. I understand that Konishi is a Japanese patent publication, originally published in Japanese as UBER-1011, and that UBER-1012 is a certified translation thereof. I understand that UBER-1013 is a certificate of translation certifying that UBER-1012 is an accurate English translation of UBER In Petitioner Uber Technologies, Inc. Exhibit 1003, p. 28

29 my analysis, I have relied on the disclosure of the certified English translation of Konishi (UBER-1012). Unless specified otherwise, when I refer to Konishi, I am referring to UBER On its face, Konishi indicates that it was published on December 6, 2002, more than one year before the earliest priority claim of the 647 patent. Accordingly, I understand that Konishi is prior art to the 647 patent. 51. Konishi generally relates to a vehicle search and allocation system using mobile phones. In particular, Konishi discloses a taxi system which permits a user to view a map that displays the location of available taxis on his or her mobile device. (See UBER-1012 at Abstract.) Figure 1 of Konishi provides a general overview of the system: Petitioner Uber Technologies, Inc. Exhibit 1003, p. 29

30 first wireless device associated with the requestor of a service information processing device second wireless device associated with the provider of a service Figure 1: UBER-1012 Figure As shown above, the Konishi system includes a vehicle information terminal 12 mounted in each vehicle and a mobile telephone set 13 held by a customer as a customer information terminal. (UBER ) The mobile telephone set 13 has built in GPS system. (UBER ) When a customer accesses the information processing device 11 with the mobile phone set 13, the customer position determination system 26 acquires and stores the customer s current position. (Id.) Konishi discloses that alternatively a mobile telephone set is mounted in each vehicle and is connected to the vehicle Petitioner Uber Technologies, Inc. Exhibit 1003, p. 30

31 information terminal 12 so that the current position of the mobile telephone set may be determined by the same system as the customer position determination system 26. (UBER ) 53. When a customer selects a vehicle allocation service with the mobile phone 13, the mobile phone is connected to the information processing device 11. (UBER ) The information processing device 11 receives and stores the phone s phone number and current position. (Id.) Vacant vehicles within a prescribed range from the mobile phone s current position are identified, and information processing device 11 reads out a map of a region of a specific range with the customer position in the center from the map system 28 to the storage device 17, inputs the customer position and the current position of the retrieved vacant vehicle (step 36), transmits the information to the mobile telephone set 13, and displays the information on the screen 25 (step 37.) (UBER , 0031.) 54. If the customer makes a reservation, the estimated required time of each vacant vehicle located within a prescribed range extracted from the vehicle monitoring system 24 is calculated. (UBER ) A priority ranking is assigned to the vacant vehicles capable of reaching the customer position within the prescribed range and each driver within the range can accept the reservation. (UBER ) If a vacant vehicle accepts the reservation, a message Petitioner Uber Technologies, Inc. Exhibit 1003, p. 31

32 indicating that the reservation has been accepted is transmitted to the mobile phone 13 and displayed and the vacant vehicles other than the reserved vehicle are no longer displayed on the mobile phone s map. (Id.) From then on, only the current position of the reserved vehicle and the customer s position are displayed on the map transmitted to the mobile phone and displayed on screen. (Id.) The screen of the customer s mobile phone is then updated at regular time intervals to display on a map the current position of the reserved vehicle as it approaches. (Id. ( The current position of the reserved vehicle, which approaches moment by moment, is displayed on the map together with the customer position (step 48), transmitted to the mobile telephone set 13, and displayed as a navigation display (step 49). ).) The portion of Konishi s Figure 2 shown below illustrates the group being formed between the customer and the vacant vehicle after the vacant vehicle accepts the reservation, and then the map being updated with the positions of the vehicle and mobile phone until the vehicle arrives. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 32

33 the service provider s and mobile phone s positions are updated use-specific group formed when reservation is accepted Figure 2: UBER-1012 Figure 2 (Annotated) B. Japanese Unexamined Patent Application Publication to Mitsuoka ( Mitsuoka ) 55. I understand that Mitsuoka is a Japanese patent publication, originally published in Japanese as UBER-1014, and that UBER-1015 is a certified translation thereof. I understand that UBER-1016 is a certificate of translation certifying that UBER-1015 is an accurate English translation of UBER In my analysis, I have relied on the disclosure of the certified English translation of Mitsuoka (UBER-1015). Unless specified otherwise, when I refer to Mitsuoka, I am referring to UBER On its face, Mitsuoka indicates that it was published Petitioner Uber Technologies, Inc. Exhibit 1003, p. 33

34 on June 30, 2003, more than one year before the earliest priority claim of the 647 patent. Accordingly, I understand that Mitsuoka is prior art to the 647 patent. 56. Mitsuoka discloses a two-way position information communication system that enables a customer to make a taxi reservation and view a map with a real-time display plotting a customer s location and the taxi s location until the taxi arrives. Mitsuoka discloses that a user who wishes to request dispatch of taxi 3 may transmit[] location information for portable terminal 1 to ASP 4, which adds display data representing the user at the current location of the user on said map, adds display data representing a taxi at the current location of the available taxi 3, and transmits this together with the vicinity map to portable terminal 1 and causes it to be displayed thereon. (UBER-1015 Abstract.) Figure 1 below is a block diagram illustrating the configuration of a vehicle dispatch guidance system according to Mitsuoka s invention. (UBER ) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 34

35 first wireless device associated with the requestor of a service second wireless device associated with the provider of a servicee Figure 3: UBER-1015 Figuree 1 (Annotated) 57. As illustrated in Figure 4 below, thee vicinity of the user is displayed on the display unit of the user s portable terminal 1, along with taxis 3A, 3B currently traveling at certain points on the map. (UBER ) While the taxi 3A travels to the user, the ASP [Applicationn Service Provider] 4 receives input of taxi 3A location information successivel ly transmitted from taxi 3A, adds an image of the taxi to the corresponding location on the vicinity map, and delivers this display data in real time to the portable terminal 1, as a result of which the status of the requested taxi heading to one s ownn current location is displayed in Petitioner Uber Technologies, Inc. Exhibit 1003, p. 35

36 real time along with a map of the vicinity on the display unit of the portable terminal 1 of the user who is the vehicle dispatch requestor. (UBER ) second wireless device associated with the provider of a service first wireless device associated with the requestor of a service Figure 4: UBER-1015 Figure 4 (Annotated) C. Japanese Unexamined Patent Application Publication to Saito Makoto ( Makoto ) 58. I understand that Makoto is a Japanese patent publication, originally published in Japanese as UBER-1008, and that UBER-1009 is a certified translation thereof. I understand that UBER-1010 is a certificate of translation certifying that UBER-1009 is an accurate English translation of UBER In my analysis, I have relied on the disclosure of the certified English translation of Makoto (UBER-1009). Unless specified otherwise, when I refer to Makoto, I am referring to UBER On its face, Makoto indicates that it was published Petitioner Uber Technologies, Inc. Exhibit 1003, p. 36

37 on July 12, 2002, more than one year before the earliest priority claim of the 647 patent. Accordingly, I understand that Makoto is prior art to the 647 patent. 59. Makoto discloses a system for mapping the location of members of a group on a group member s mobile phone. As shown in the figure below, an embodiment of the Makoto system includes mobile phones and in twoway communication with a server referred to as position information service providing device 305. (UBER , Figure 16.) server with database mobile phones two-way communication Figure 5: UBER-1009 Figure 16 (Annotated) Makoto s position information service providing device 305 includes a storage unit 321 that stores information received from the mobile communication devices. (UBER ) Makoto teaches that a mobile device may generate a group registration request containing the communication device IDs of a plurality of Petitioner Uber Technologies, Inc. Exhibit 1003, p. 37

38 mobile communication devices belonging to the group to be generated and transmit the registration request to the location information service providing device 305. (UBER ) The location information service providing device then generates a group ID and associates the communication device IDs of the mobile communication devices identified in the registration request with the group ID. (UBER ) The group ID is then transmitted to the requesting user s mobile communication device. (UBER ) 60. Makoto teaches that the mobile phones in the group may then register their location information with the location information service providing device 305. Specifically, the mobile communications devices may transmit a location information registration request to the location information service providing device 305. (UBER ) The location information registration request contains the communication device s device ID, the group ID, and GPS information. (UBER ) The location information is then associated with the group ID and the communication device ID within the storage unit 321 of the location information service providing device. (UBER ) 61. Makoto further teaches that a mobile phone in the group may request location information for the group members and receive back location information and can display the location information for the group members on a map on the Petitioner Uber Technologies, Inc. Exhibit 1003, p. 38

39 phone. A mobile communication device may generate a location information request containing the device ID and group ID and transmit the request to the location information service providing device 305. (UBER ) Makoto s Figure 21, shown below, illustrates an example procedure when a mobile communication device transmits a location information request to the location information service providing device. (UBER ) Figure 6: UBER-1009 Figure 21 Petitioner Uber Technologies, Inc. Exhibit 1003, p. 39

40 62. A location information request is generated and transmitted to the location information service providing device. (UBER ) The location information services providing device receives the request and determines whether location information is stored for any other devices associated with the group ID. (UBER ) If a time limit has not expired (UBER ), the location information services providing device transmits the location information for a group member to the mobile communication device that sent the request (UBER ). The mobile communication device may then display a map with the GPS information for the group member. (UBER ) 63. In another embodiment, Makoto explains that the map is generated using the positional relationship of mobile phone devices. (UBER ) For example, in the map in Figure 5(A) below shows a user A located within the enclosure of station 20 and user B located in a neighboring park 21. (Id.) Figure 5(B) illustrates a display that may be generated for displaying only one mobile device, user B. (Id.) As shown in the illustration annotated below (UBER-1009 Fig. 5), Makoto illustrates that when plotting the position of multiple users on a map, the system uses the positional relationship of the mobile phone devices to determine a default resolution for the map. When a display is generated plotting the location of mobile phone devices 4 1 and 4 2, a lower default resolution is used to Petitioner Uber Technologies, Inc. Exhibit 1003, p. 40

41 provide a display that shows the location of both devices. In the lower resolution display shown in Figure 5(A) indicates that user B s mobile phone device 4 2 is in a park 21, but the display does not render any details of that park. (UBER , Figure 5(A).) Makoto further teaches that when the location of only mobile phone device 4 2 is specified for display, then Figure 5(B) would be generated. (UBER ) Figure 5(B) illustrates a higher default geography resolution for the map plotting just user B. (UBER-1009 Figure 5(B).) As shown, while Figure 5(A) only indicates that user B is located in a neighboring park, Figure 5(B) provides a higher resolution geography of the park and plots user B s location with the added context of the map indicating a gate 26 for entering the park and a pond 25 within the park. (Id.) lower default resolution to plot both users locations Figure 7: UBER-1009 Figure 5(A) (Annotated) user locations Figure 8: UBER-1009 Figure 5(B) (Annotated) 64. Makoto further discloses that the mobile phone device may read a map from internal storage or download from a predetermined server device connected to the mobile phone communication network. (UBER ) higher default resolution to plot one user s location Petitioner Uber Technologies, Inc. Exhibit 1003, p. 41

42 65. Makoto also discloses that after receipt of an instruction changing a map, for example, zooming-in [or] zooming-out, the system specifies a new map according to the instruction. (UBER ) 66. Makoto also discloses an embodiment that allows a user to request location information of a specific partner without knowing the communication ID in advance using a predetermined attribute. (UBER , Figure 11.) As shown below, the system includes mobile devices 74 1, 74 2, and 74 3 for users A, B, and C, respectively. (UBER , Figure 11.) The control device 75 receives location information from the mobile phones and stores the location information with attribute information and the mobile phones communication IDs. (UBER , 0085, Figure 13.) When the control device receives a location information request for a user with attribute information that matches received location information for a user, the control device transmits the information to the source requesting the location information. (UBER , 0086.) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 42

43 Figure 9: UBER-1009 Figure In relation to Figure 22 below, Makoto discloses an embodiment that includes both a communication control device 106 and a service providing device 105 that communicate across a mobile phone communication network 302. (UBER ) Makoto teaches that in response to a request from a mobile device including the device s ID, GPS information, and attribute information (UBER ), the communication control device 106 generates a request with the GPS information and attribute information to a service providing device 105 (UBER ). The service providing device 105 then processes the GPS information and attribute information to generate service information, for example to identify a Chinese restaurant within walking distance of the user. (UBER ) The service providing device 105 then transmits Petitioner Uber Technologies, Inc. Exhibit 1003, p. 43

44 the service information to the communication control device 106, which then transmits the service information to the mobile communication device. (UBER ) Makoto thus teaches that it was known to obtain information from providers to offer services to mobile devices. (3) (4) (1) (2) Figure 10: UBER-1009 Figure 22 (Annotated) D. U.S. Patent No. 6,714,797 to Rautila ( Rautila ) 68. I understand that Rautila bears an issue date of March 30, 2004, more than one year prior to the earliest priority claim of the 647 patent. (UBER-1025 at 1.) Accordingly, I understand that Rautila is prior art to the 647 patent. 69. Rautila discloses a system for downloading digital products to an Internet-capable cellular phone. (UBER :7-12.) As background, Rautila Petitioner Uber Technologies, Inc. Exhibit 1003, p. 44

45 explains that with the advent of cellular phones, a user may surf the Internet and order goods directly through cellular phone in a similar manner as that used with a PC. (UBER :42-46.) The downloaded digital products contemplated by Rautila include software. For example, Rautila discloses download[ing] software file using a cellular phone. (UBER :62-63.) Rautila also discloses installing the downloaded software on the mobile phone. For example, in the context of the downloaded software being a game, Rautila discloses that a person without a landline could order a video game from a web site on the other side of the planet and download it into his palm computer connected to a cellular or standalone WAP [Wireless Access Protocol] or HTML (Hypertext Markup Language) capable phone and play the game on the spot. (UBER :49-55.) 70. Rautila teaches a system that includes a mobile station or terminal 10 such as a WAP-capable cellular telephone, a Hypertext Markup Language (HTML) capable cellular telephone, or a cellular telephone with a processor-based system connected to it. (UBER :14-20.) The mobile station 10 may communicate through the mobile network 80 to the Internet 150 and then to an electronic shop server 40. (UBER :26-29.) The electronic shop server 40 provides a menu of digital products supplied from content providers 100 available for purchase by user 20. (UBER :41-43.) The user may then directly Petitioner Uber Technologies, Inc. Exhibit 1003, p. 45

46 download the digital products from the electronic shop server 40 using the cellular phone capabilities of the mobile station 10. (UBER :43-45.) E. U.S. Patent No. 6,658,260 to Knotts ( Knotts ) 71. I understand that Knotts bears an issue date of December 2, 2003, more than one year prior to the earliest priority claim of the 647 patent. (UBER at 1.) Accordingly, I understand that Knotts is prior art to the 647 patent. 72. Knotts discloses that it was known to communicate to a wireless device on a carrier s network by transmitting communications to a Wireless Internet Gateway (WIG) added to the carrier s network. Specifically, Knotts disclose than an SMSC [Short Message Service Center] is a core short messaging router, which connects to the SS7 public network. (UBER :40-41.) A SMSC provides phone-to-phone two-way messaging with that carrier s network, either mobile originated or mobile terminated. (UBER :41-43.) A Wireless Internet Gateway (WIG) is added to the carrier s network. (UBER :44-46.) The WIG acts as a multi-protocol router by typically adding, e.g., six or more additional carrier-class interfaces. (UBER :48-49.) A WIG provides an IP based door into a carrier s network. ) (UBER :50.) Knotts thus teaches sending messages over the internet via a gateway to access various carriers networks. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 46

47 73. Knotts teaches a system for providing messaging to customers using native SMS Inter-Carrier Messaging, i.e., phone number only messaging. (UBER :39-42.) The Inter-Carrier messaging module determines the appropriate carrier for the recipient, appends the appropriate syntax to the short message to allow internet protocol (IP) or other standardized communication techniques between SMSCs [Short Message Service Centers] of the two carriers, and routes the short message to the destination carrier. Once received, the destination carrier s network delivers the message to the final destination. (UBER :59-67.) As shown below, Knotts s Figure 3 shows exemplary interconnecting between the MDC [Messaging Distribution Center] including an Inter-Carrier messaging module, and other carrier s networks using TCP/IP protocols. (UBER :27-30.) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 47

48 Figure 11: UBER-1026 Figure In Figure 3, shown above, SMPP refers to Short Message Peer-to- Peer protocol (UBER :46-47), CDMP refers to a Motorola proprietary protocol (UBER :53-54), OIS refers to another proprietary protocol, (UBER :54), RMI refers to Remote Method Identification (UBER :56-58), SMSC refers to a Short Message Service Center (UBER :54-55), and MSC refers to a mobile service center (UBER :14-15). 75. Figure 5 below illustrates entries in an exemplary Carrier Routing Table 120. As shown, a first entry 488 indicates that communications between Petitioner Uber Technologies, Inc. Exhibit 1003, p. 48

49 the Inter-Carrier service provider (ICSP) and the carrier AT&T is by SMTP protocol (i.e., ), and that the phone number only short messages received for delivery to AT&T should be appended with the A second entry 489 indicates that communication between the ICSP and the carrier Verizon is by SMTP protocol, and that short messages sent with phone number only should be appended with the (UBER :20-25.) Thus, Knotts teaches communication between devices associated with different cell phone carriers. Figure 12: UBER-1026 Figure Figure 6 below depicts a phone number only experience for a subscriber 210 of Carrier 1 to send a short message to a subscriber 500 of a different carrier (e.g., which does not subscribe to the ICSP (i.e., Service Bureau) including the Inter-carrier Messaging Module). (UBER :42-46.) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 49

50 The subscriber 210 need only send a short message using the simple phone number of subscriber 500, with the Inter-Carrier messaging module 100 automatically determining the carrier provider servicing subscriber 500, the method of communication between the Inter-Carrier messaging module 100 of the MDC 200 and the carrier 2 270, and then adding (e.g., appending) the appropriate syntax to the phone number to actually address the short message to (UBER :46-55.) Figure 13: UBER-1026 Figure 6 F. U.S. Patent No. 6,925,381 to Adamczyk ( Adamczyk ) 77. I understand that Adamczyk was filed on June 24, 2003, before the earliest priority claim of the 647 patent, and issued as a patent on August 2, (UBER-1028 at 1.) Accordingly, I understand that Adamczyk is prior art to the 647 patent. Adamczyk discloses a system to match a passenger with a driver based on the current location of the driver. Figure 2 of Adamczyk, shown below, Petitioner Uber Technologies, Inc. Exhibit 1003, p. 50

51 illustrates a hardware and software environment including embodiments of the present invention. (UBER :66-6:1.) As shown, a ride matching server 205 is coupled through a network interface 207 a ride matching server 205 is coupled through a network interface 207 to a network 210, such as an internet network. (UBER :2-3.) The ride matching server 205 is configured to identify a candidate driver for a trip requested by a passenger based on the current location of the candidate driver. (UBER :5-8.) The subscriber database 209 contains information related to subscribed users, who may be identified as passengers, drivers or both. (UBER :8-10.) The location server 220 may obtain the satellite positioning based location information either directly from user location devices, such as car phone/mobile terminal 240 (hereinafter referred to as a mobile terminal) or through the wireless network 215 and the internet 210. (UBER :39-43.) The location information is acquired by the mobile terminal 240 based on measurements of signals from positioning system satellites, such as the GPS satellite 250. (UBER :43-46.) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 51

52 Figure 14: UBER-1028 Figure As shown below, the system may receive a trip request from a passenger. (UBER :45-60, Figure 6.) The request may be received from a location-enabled mobile terminal, and the current location for the requesting passenger s mobile terminal may then be presumed to be the start location for the trip. (UBER :56-63.) The system identifies a driver based in-part on the customer s location and driver s last known location. (UBER :64-10:33 ( The location service may determine the last known location for the drivers based on information obtained by the mobile terminals 240 from the Global Positioning System Satellite 250. ).) After a candidate driver is identified, a communication connection is established between the passenger and the candidate driver. (UBER :33-35.) The connection may be a voice connection. (UBER :40-41.) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 52

53 Figure 15: UBER Figure 6 VII. GROUND 1: KONISHI RENDERS CLAIMS 1, 5-7, 10-11, 22-23, 28, 32-33, 36-37, AND OBVIOUS 79. As explained below, a person of ordinary skilll would have understood that Konishi teaches, suggests, or discloses everyy limitation of claims 1, 5, 7, 10-11, 22-23, 28, 32-33, 36-37, and of the 647 patent. A. Claim 1 1. A method of tracking proximity of position associated with a first wireless device relative to a position of a second wireless device, wherein onee of the first wireless device and the second wireless device iss associated with a provider of a desired service and the other of the first wireless device and Petitioner Uber Technologies, Inc. Exhibit 1003, p. 53

54 the second wireless device iss associated with a requestor of the desired service, the method comprising: 80. Konishi discloses a method of tracking the proximity of position between a wireless device of a customer seekingg a desired service (e.g., a ride) and a service providerr offering the desired service. (UBER ( The vehicle allocation system 10 of the present invention is suited to the allocation of hired automobiles ), 0026, ) Konishi teaches the customer and the vehicle both having GPS equipped wireless devices (i.e.,, first and second wireless devices) that are used to provide the tracking. (UBER , 0039.) Konishi specifically discloses that the customer may havee a mobile telephone set with a built-in GPS system. (UBER ) Konishi discloses thatt the vehicle has a vehicle information terminal that has a GPS system 23 for detecting the current position of the vehicle. (UBER ) Konishi disclosess that a radio communicationn set 21 is connected to the information processing device 11 via an interface so that information may be transmitted to and received from the vehicle informationn terminal 12, which is equipped with a radio communication set 22. (UBER ) A person of ordinary skill in the art would thus understand that the GPS enabled vehicle information terminal and the radio communication set (or alternatively the mobile telephone) constitute a wirelesss device. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 54

55 81. Konishi also discloses the customer position and the current position of the vehicle thatt accepted the reservation are displayed as a navigation display on the screen of the mobile telephone set 13 moment by moment until the customer enters the vehicle.. (UBER ) A person of ordinary skilll in the art would therefore understand that Konishi teaches a method of tracking proximity of position associated with the customer s wireless device relative to a position of the vehicle s wireless device. A person of ordinary skill in the art would therefore understand that Konishi teaches a method of tracking proximity of position associated with a first wireless device (i.e., the customer s wireless device) relative to the position of a second wireless device (i.e., the vehicle s wirelesss device). A person of ordinary skill in the art would further understandd that the customer is a requestor of the desired service and the vehicle iss the provider of the desired service. 2. causing receipt of information on the first wireless device representing the position off the second wirelesss device and a map associated with the position associated with the first wireless device and the position of second wireless device; 82. Konishi discloses transmitting the position and map information from the information processing device 11 to the customer s mobile phone (i.e., the first wirelesss device). A person of ordinary skill in the art would thus understand that Konishii teaches causing receipt of the information on the first wireless device. Konishii further teaches that the information represents the position of the vacant Petitioner Uber Technologies, Inc. Exhibit 1003, p. 55

56 vehicle that accepts a reservation (i.e., the second wireless device) and a map showing the position of both the customer s mobile phone and the vehicle s wireless device. Specifically, Konishi discloses that a map is received and is read out on the customer s mobile phone representing the position of the customer and the vacant vehicles within range of the customer. (UBER ( when there is a vacant vehicle that matches the search conditions, the information processing device 11 reads out a map of a region of a specific range with the customer position in the center of the map system 28 to the storage device 17, inputs the customer position and the current position of the retrieved vacant vehicle (step 36), transmits the information to the mobile telephone set 13, and displays the information on the screen 25 (step 37). ) If the customer makes a reservation and a vehicle accepts the reservation, then the vacant vehicles other than the reserved vehicle, which is the vacant vehicle that accepted the reservation, are deleted from the map, and the current position of only the reserved vehicle is displayed on the map together with the customer position (step 48), transmitted to the mobile telephone set 13, and displayed on the screen 25 (step 49). (UBER , 0035.) A person of ordinary skill in the art would therefore understand that Konishi teaches causing receipt of information on the first wireless device (i.e., the customer s wireless device) representing the position of the second wireless device Petitioner Uber Technologies, Inc. Exhibit 1003, p. 56

57 (i.e., the vehicle s wireless device) and a map associated with the position associated with the first wireless device and the position off second wireless device. 3. causing display of the map on the first wireless device with position associated with thee first wireless device and the position of the second wireless devicee renderedd thereon; and 83. Konishi discloses causing the customer s mobile phone to display a map with the position associated with the customer s mobile phone and the position of the reserved vehicle rendered thereon. If the customer makes a reservation and a vehicle accepts the reservation,, then the vacant vehicles other than the reserved vehicle, which is the vacant vehicle that accepted the reservation, are deleted from the map, and the current position of only the reserved vehicle is displayed on the map together with the customerr position (step 48), transmitted to the mobile telephone set 13, and displayed on thee screen 25 (step 49) ). (UBER ; see also UBER ( the customer position and the current position of the vehicle that accepted the reservation are displayed as a navigation display on the screen of the mobile telephone sett 13 moment by moment until the customer enters the vehicle. ), 0031.) Konishi explains that it refers to the current position of the accessing mobile telephone set 13 as the customer position. (UBER ) A person of ordinary skilll in the art would therefore understand that Konishi teaches causing display of the map on the first wirelesss device (i.e., the customer s mobile phone) with position associated with the first Petitioner Uber Technologies, Inc. Exhibit 1003, p. 57

58 wirelesss device (the customer position) and the position of the second wireless device (the current position of the vehicle) rendered thereon. 4. causing receipt of information on the first wireless device representing positional update of the second wireless device, and causing update of display of the map on the first wireless device with the position associated with the first wireless device and updatedd position of the second wireless device rendered thereon; 84. Konishi discloses that after the customer makes a reservation and a vacant vehicle accepts the reservation, then the position information and map received by and rendered on the customer s mobile phone (i.e., the first wireless device) is updatedd to display the current position of the customer ss mobile phone and the vehicle moment by moment until the customer enters the vehicle (UBER , 0033 ( The current position of the reserved vehicle, which approaches moment by moment, is displayed on the map together with the customer position (step 48), transmitted to the mobile telephone set 13, and displayed as a navigation display (step 49) ), 0035 ( the customer position and the current position of the vehicle that accepted the reservation are displayed as a navigation display on the screen of the mobile telephone set 13 moment by moment until the customer enters the vehicle. ).) ) A person of ordinary skill in the art would understand that Konishi thus discloses causing receipt of informationn on the first wireless device (the customer s mobile phone) representing a positional update of the second wireless device (the vehicle s wireless device) and causing Petitioner Uber Technologies, Inc. Exhibit 1003, p. 58

59 update of the display of the map on the first wireless device with the position associated with the first wireless device and the updated position of the second wirelesss device rendered thereon. 5. wherein the causing of thee update is to be performed to indicate proximity of and direction between position of the providerr of the desired service and position associated with the requestor of the desiredd service; 85. Konishi discloses that after the customer makes a reservation and a vacant vehicle accepts the reservation, then the position information and map received by and rendered on the customer s mobile phone is updated moment-by- position of the reserved vehicle, whichh approaches moment by moment, is moment until the customer enters the vehicle. (UBER ( The current displayed on the map together with the customerr position (step 48), transmitted to the mobile telephone set 13, and displayed as a navigation display (step 49) ), 0035 ( the customer position and the current position of the vehicle that accepted the reservation are displayedd as a navigation display on the screen of the mobile telephone set 13 moment by moment until the customer enters the vehicle. ).) A person of ordinary skill in the art would understand that the distance between the customer s mobile phone and the vehicle on a map would indicate the proximity between current position of the customer s mobile phone (i.e., the requestor of the service s mobile phone) and the vehicle (i.e., thee provider of the desired service). A person of ordinary skill in the art would likewise understand that the relative Petitioner Uber Technologies, Inc. Exhibit 1003, p. 59

60 positions of the customer s mobile phone and the vehicle on a map would indicate the direction between the position of the customer s mobile phone and the vehicle. Therefore, a person of ordinary skill in the art would understand that Konishi teaches this claim limitation. 86. Further, Konishi teaches that a user may specify search conditions, such as all vacant vehicles located within a prescribed range from the customer position. (UBER ) When there is a vacant vehicle that matches the search condition, the information processing device 11 reads out a map of the region of a specific range within the customer position in the center of the map system 28 to the storage device 17, inputs the customer position and the current position of the retrieved vacant vehicle (step 36), transmits the information to the mobile telephone set 13, and displays the information on the screen 25 (step 37). (Id.) A person of ordinary skill in the art would further understand that displaying a vehicle within a prescribed range would provide an update indicating the proximity of and direction between position of the provider of the desired service and position associated with the requestor of the desired service. 87. Additionally, a person of ordinary skill in the art would understand that it would have been an obvious design decision for the person designing the system to also display the distance, travel time, and/or compass direction between the vehicle and the user. Konishi discloses that the estimated travel time from a Petitioner Uber Technologies, Inc. Exhibit 1003, p. 60

61 vacant vehicle to a customer is determined by dividing the travel distance on an ordinary route between the customer position and the current position of the vacant vehicle by the estimated average speed corresponding to the type of road and, if U- turns are necessary, adding appropriate points in accordance with the number of intersections with traffic signals and the like. (UBER ) Thus, Konishi discloses that its server calculated the travel distance and travel time between the vehicle and the mobile phone. Likewise, Konishi s analysis of the route between the customer position and the vacant vehicle position indicates to a person of ordinary skill in the art that the server determined the travel distance, direction, and travel time between the vehicle and the mobile phone. Because Konishi teaches that the server had such information, a person of ordinary skill in the art would have found it to be an obvious design decision to display that additional proximity and direction information on the map. 88. Further, Konishi discloses that the map with the current positions of the reserved vehicle and mobile phone that is transmitted to and displayed on the mobile phone is updated moment by moment until the customer enters the vehicle. (UBER , 0035.) A person of ordinary skill in the art would understand that updating the current positions of the mobile phone and the vehicle on the map moment-by-moment indicates the direction of travel of the devices. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 61

62 6. wherein the method is invoked responsive to launching an application on the first wireless device in connection with a request from the requestor for the desired service; and 89. Konishi discloses that the operationn of the vehicle allocation system 10 starts when the customer selects a vehicle allocation service with the mobile telephone set 13. (UBER , Figure 2.) For example, Konishi discloses that when the customer selects a vehicle allocation servicee with the mobile telephone set 13 [t]he information processing device 11 executes a program.. (Id.) A person of ordinary skill in the art would understandd that a customer would launch an application on his or her mobile phonee relating to the vehicle allocation service before selecting a vehicle allocation service with his or her mobile phone. Konishii further discloses that execution of the program is terminated if the customer does not make a reservation n and thenn presses a disconnect button. (UBER ) A person of ordinary skilll in the art would understand that for the application to be terminated the customerr would have previously launched an application on the mobile telephonee set to invoke the method. A person of ordinary skill in the art would therefore understand that the method of claim 1 is invoked in response to the customer launching ann application on the first wireless device (the customer s mobile device) in connection with a request from the requestor (the customer) for the desired service (a ride). Petitioner Uber Technologies, Inc. Exhibit 1003, p. 62

63 90. Further, prior to the priority date of the 647 patent a person of ordinary skill in the art would have understood that various methods could be invoked in response to a user launching an application on a wireless device to request a service. Thus a person of ordinary skill in the artt would have found it obvious for the method to select the provider of the desiredd service in association with an application launched by the requestor onn the first wireless device, wherein the second wireless device is associated with thee provider and is thereby selected in associated with launch of the application. 7. wherein the provider is selected in connectionn with the request for the desired service and the method further comprises forming a use-specific group to have the first wireless device and the second wireless device in connection with the request for the desired service. 91. Konishi discloses that the provider (e.g., a vacant vehicle) is selected in connection with the request for the desired service. (UBER ) Specifically, Konishi discloses that one of the vacant vehicles is selected in response to a customer selecting a vehicle allocation service. (Id.) A vehicle that is within a prescribed range of the customer is selected, and if the vehicle accepts the reservation then a group is formed consistingg of wireless devices of the service provider (i.e., the vehicle that accepted the reservation) and the customer. (UBER- the reserved vehicle, which is the vacant vehicle that accepted the reservation, , 0039.) Konishi discloses that the vacant vehicles other than are Petitioner Uber Technologies, Inc. Exhibit 1003, p. 63

64 deleted from the map, and the current position off only the reserved vehicle is displayed on the map together with the customerr position (step 48), transmitted to the mobile phone set 13, and displayedd on the screen 25 (step 49). (UBER ) A person of ordinary skill in the art would thus understand that a use- specificc group is formed between the customer s s and the vehicle s wireless devices. The customer s mobile phones is then updated moment-by-moment enters the vehicle. (Id.) Konishi s system may also be configured so that the current position of the with the customer s and vehicle s current positions until the customer reserved vehicle is displayedd while differentiating the current position of the reserved vehicle from the positions of other vacant vehicles by adding a shape or color differing from those of the positions of other vacant vehicles. (UBER ) A person of ordinary skill in the art would therefore understand that the provider (the vacant vehicle) is selected in connection with the request for the desired service (a ride) and the method further comprises forming a use-specific group (accepting the reservation) to have the first wireless device (the customer s wirelesss device) and the second wireless device (the vehicle s wireless device) in connection with the request for the desired service. B. Claim A method of tracking proximity of position associated with a first wireless device relative to position of a second wireless device, wherein thee first wireless device is associated with a requestor of a desired servicee and the Petitioner Uber Technologies, Inc. Exhibit 1003, p. 64

65 second wireless device is associated with a provider of the desired service, the method comprising: 92. Konishi discloses a method of tracking the proximity of position between a wireless device of a customer seeking a desired service (e.g., a ride) and a service provider offering the desired service. (UBER , 0026, ) Konishi teaches the customer and the vehicle both having GPS equipped wireless devices (i.e., first and second wireless devices) that are used to provide the tracking. (UBER , 0039.) Konishi specifically discloses that the customer may have a mobile telephone set with a built-in GPS system. (UBER ) Konishi discloses that the vehicle has a vehicle information terminal that has a GPS system 23 for detecting the current position of the vehicle. (UBER ) Konishi discloses that a radio communication set 21 is connected to the information processing device 11 via an interface so that information may be transmitted to and received from the vehicle information terminal 12, which is equipped with a radio communication set 22. (UBER ) A person of ordinary skill in the art would thus understand that the GPS enabled vehicle information terminal and the radio communication set constitute a wireless device. 93. Konishi also discloses the customer position and the current position of the vehicle that accepted the reservation are displayed as a navigation display on the screen of the mobile telephone set 13 moment by moment until the customer Petitioner Uber Technologies, Inc. Exhibit 1003, p. 65

66 enters the vehicle.. (UBER ) A person of ordinary skilll in the art would therefore understand that Konishi teaches a method of tracking proximity of position associated with the customer s wireless device relative to a position of the vehicle s wireless device. A person of ordinary skill in the art would therefore understand that Konishi teaches a method of tracking proximity of position associated with a first wireless device (i.e., the customer s wireless device) relative to the position of a second wireless device (i.e., the vehicle s wirelesss device). A person of ordinary skill in the art would further understandd that the customer is a requestor of the desired service and the vehicle iss the provider of the desired service. 2. selecting the provider of the desiredd service in association with an applicatio on launched by the requestor on the first wireless device, wherein thee second wireless device is associated with the providerr and is thereby selected in associated with launch of the application; 94. Konishi discloses locating and selecting a vehicle (i.e., the provider of the desired service) when the customer selects a vehicle allocation service with the mobile telephone set 13. (UBER-1012 make a reservationn and select a reservation link on 0029, Figure 2.) Konishi further discloses that a customer may the screen. (UBER ) Vehicles within a prescribed range of the customer are selected, and if a vehicle accepts the reservation then a group is formed consisting of the mobile phones of the service provider (i.e., the vehiclee Petitioner Uber Technologies, Inc. Exhibit 1003, p. 66

67 that accepted the reservation n) and the customer. (UBER , 0039.) Konishi further discloses that execution n of the program is terminated if the customer does not make a reservation and then presses a disconnect button. (UBER ) A person of ordinary skilll in the art would understand that for the application to be terminated the customerr would have previously launched the application. A person of ordinary skill in thee art would therefore understandd that Konishi teaches that the vacant vehicle and the vehiclee that accepts the reservation are selected in association with the customer launching an application on the mobile device, and the second wireless device is associated with the provider and is selected in association with the launch of the application. 95. Further, prior to the priority date of the 647 patent a person of ordinary skill in the art would have understood that various methods could be invoked in response to a user launching an application on a wireless device to request a service. Thus a person of ordinary skill in the artt would have found it obvious for the method to select the provider of the desiredd service in association with an application launched by the requestor onn the first wireless device, wherein the second wireless device is associated with thee provider and is thereby selected in associated with launch of the application. 3. causing receipt of information on the first wireless device representing position of thee provider,, dependent on global positioning system (GPS) position data provided by the second wireless device, and receipt off information Petitioner Uber Technologies, Inc. Exhibit 1003, p. 67

68 representing a map associated with the position associated with the first wireless device and the position of the second wireless device; 96. This claim element substantially mirrors the element of claim 1 addressed in VII.A.2 above with the additional limitation that the information is dependent on global positioning system (GPS) position data provided by the second wireless device. Konishi discloses that the position information received by and displayed on the customer s (i.e., the first) wireless device includes GPS information from the vehicle s (i.e., the second) wireless device. (UBER , ) Konishi discloses that the vehicle has a vehicle information terminal that has a GPS system 23 for detecting the current position of the vehicle. (UBER ) Konishi discloses that a radio communication set 21 is connected to the information processing device 11 via an interface so that information may be transmitted to and received from the vehicle information terminal 12, which is equipped with a radio communication set 22. (UBER ) A person of ordinary skill in the art would thus understand that the GPS enabled vehicle information terminal and the radio communication set are a wireless device. Konishi therefore teaches causing receipt of information on the first wireless device (the customer s mobile phone) representing the position of the provider (the vehicle) is dependent on GPS position data provided by the second wireless device (the vehicle s wireless device). Petitioner Uber Technologies, Inc. Exhibit 1003, p. 68

69 4. causing display of the map on the first wireless device with the position associated with the requestor and the position of the second wireless device renderedd thereon; and 97. Konishi discloses this limitation forr the same reasons discussed above in the context of the identical limitation in claim 1. (See VII.A.3.) 5. causing receipt of information on the first wireless device representing intermittent positional update dependent on GPS position dataa providedd by the second wireless device, and 98. This claim limitation substantially mirrors the element of claim 1 addressed in VII.A.4 above with the additionall limitation that the informationn represents intermittent positional update and that the updates are dependent on GPS position dataa provided by the second wireless device. 99. Konishi discloses that the vehicle location may be transmitted every time the vehicle travels 300 meters, for example.. (UBER-1012 a customer will be affected by 0027.) Konishi further discloses that the time for a vehicle to reach the type of road, the number of intersections with traffic signals, and the like. (UBER ) Because the time it takes for a vehicle to travel 300 meters would vary, a person of ordinary skill in the art would understand that the updates would be received at irregular time intervals. Thus, a person of ordinary skill in the art would understand that Konishi s system would provide intermittent updates of the vehicle s location. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 69

70 100. Additionally, a person of ordinary skill in the art would understand that the broadest reasonable interpretation of intermittent would be not continuous. Konishi discloses that [u]ntil the reserved vehicle reaches the customer position and the customer enters the vehicle (step 50), the current position of the reserved vehicle is read out from the database 19 by the vehicle monitoring system 24 at regular time intervals (step 51). (UBER ) The current position of the reserved vehicle, which approaches moment by moment, is displayed on the map together with the customer position (step 48), transmitted to the mobile telephone set 13, and displayed as a navigation display (step 49). (UBER , see also UBER ) A person of ordinary skill in the art would understand that providing updates at regular time intervals and that displaying the customer s and vehicle s current positions moment by moment discloses providing intermittent positional updates dependent on the GPS position data provided by the vehicle under the broadest reasonable interpretation of the term Konishi discloses that the customer and the vehicle have GPS enabled wireless devices, and that the updates are dependent on the position information provided by those devices. (UBER , 0028, 0039.) A person of ordinary skill in the art at the time of the purported invention would have understood that wireless devices, especially in moving vehicles, may have Petitioner Uber Technologies, Inc. Exhibit 1003, p. 70

71 intermittent coverage. The wireless devices would be unable to send their current locations to the server when out of coverage, butt then could resume when back in coverage. Thus, a person of ordinary skill in thee art would understand that when coverage is intermittent then the customer s mobile device would receive updates with the vehicle s location intermittently. A person of ordinary skill in the art would thus understand that Konishi teaches causing receiptt of information on the first wireless device representing intermittent positional update dependent on GPS position data provided by the second wireless device. 6. causing update of display of the map on the first wireless device with respective position associated with the first wireless device and positional update dependent on the GPS position data provided by the second wireless device renderedd thereon; ; 102. This claim element is substantially similar to the element of claim 1 addressed in VII.A.5 above with the additionall limitation that the informationn is dependent on global positioning system (GPS) position data provided by the second wireless device. Konishi discloses that the position information received by and displayed on the customer s (i.e., the first) wireless device includes GPS information from the vehicle s (i.e., the second) wireless device. (UBER , ) Konishi discloses that the vehicle has a vehicle information terminal that has a GPS system 23 for detecting the current position of the vehicle.. (UBER ) Konishi discloses that a radio Petitioner Uber Technologies, Inc. Exhibit 1003, p. 71

72 communication set 21 is connected to the information processing device 11 via an interface so that informationn may be transmitted to and received from the vehicle information terminal 12, which is equipped with a radio communication set 22.. (UBER ) A person of ordinary skilll in the art would thus understand that the GPS enabled vehiclee information terminal and the radio communicationn set are a wireless device. A person of ordinary skilll in the art would therefore understand that Konishi teaches causing update of display of the map on the first wirelesss device (the customer s mobile phone) with respective position associated with the first wireless devicee (the customer s mobile phone) and positional update dependent on the GPS position data provided by the second wireless device (the vehicle s GPS location from its GPS-enabled wireless device) rendered thereon. 7. wherein selecting the provider of the desired service includes forming a use-specific group to have the first wireless device and the second wireless device in connection with the request for the desired service Konishi discloses this limitation forr the same reasons discussed above in the context of a counterpart limitation in claim 1. (See VII.A.7.) C. Claim Independent claim 28 recites an apparatus comprising instructions stored on machine-readable media, the instructions operable to perform a method substantially corresponding to method recited in claim 1. As explained below, Konishii discloses each limitation of claim 28. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 72

73 1. An apparatus comprising instructions stored on non- when executed operablee transitory machine-readable media, the instructions to:" 105. Konishi s Figure 1 illustrates a vehicle allocation system 10 thatt comprises an information processing device 11 serving as the core of the system, a vehicle information terminal 12 mounted in each vehicle,, and a mobile telephone set 13 held by a customer. (UBER ; see also UBER , ) A person of ordinary skill in the art would understand that the information processing device, vehicle information terminal, and mobile telephone set would include instructions stored on machine-readable media thatt would remain after the devices were powered off. A person of ordinary skill in the art would therefore understand that components in Konishi s Figure 1 constitute an apparatus including instructions stored on non-transitory machine-readable media when executed would be operable to perform a method of tracking the proximity of position between a wireless device of a customerr seeking a desired service (e.g., a ride) and a servicee provider offering the desired service. 2. cause receipt of informatio on on the first wireless devicee representing position of thee second wireless device and a map associated with position associated with the first wireless device and the position of the second wireless device; Petitioner Uber Technologies, Inc. Exhibit 1003, p. 73

74 106. A person of ordinary skilll in the art would understand that Konishii teaches this limitation for the same reasons discussed above in the context of a counterpart limitation in claim 1. (Seee VII.A.2.) 3. cause display of the map on the firstt wireless device with the position association with the first wireless device and the position of the second wireless devicee renderedd thereon; and 107. A person of ordinary skilll in the art would understand that Konishii teaches this limitation for the same reasons discussed above in the context of a counterpart limitation in claim 1. (Seee VII.A.3.) 4. cause receipt of informatio on on the first wireless devicee representing positional update of the second wireless device, and cause update of displayy of the map on the first wireless device with the position associated with the first wirelesss device and updated position of the second wireless devicee renderedd thereon; ; 108. A person of ordinary skilll in the art would understand that Konishii teaches this limitation for the same reasons discussed above in the context of a counterpart limitation in claim 1. (Seee VII.A.4.) 5. wherein one of the first wireless device and the second wireless device is associated with a provider of a desired service, 109. A person of ordinary skilll in the art would understand that Konishii teaches a first wireless device associated with thee requestorr of a service (e.g., a ride) and a second wireless device associated with the provider of the desired Petitioner Uber Technologies, Inc. Exhibit 1003, p. 74

75 service. (UBER , 0039.) Therefore Konishi teaches this limitation to one of ordinary skill in the art. 6. wherein the update of the display is to performed to indicate proximity of and direction between the providerr of the desired servicee and a position associated with a requestor of the desired service, 110. A person of ordinary skilll in the art would understand that Konishii teaches this limitation for the same reasons discussed above in the context of a counterpart limitation in claim 1. (Seee VII.A.5.) 7. wherein the causing of thee receipt off the information representing the position, the causing of the display, and the causing of the receipt of information representing positional update are invoked responsive to launching an application on the first wireless device in connection with a request by the requestor for the desiredd service, 111. A person of ordinary skilll in the art would understand that Konishii teaches this limitation for the same reasons discussed above in the context of a counterpart limitation in claim 1. (Seee VII.A.6.) 8. wherein the provider is selected in connectionn with the request for the desired service, wherein the instructions when executed are to cause formation of a use-specific and the second group to have the first wireless devicee wireless device in connection with the request for the desired service A person of ordinary skilll in the art would understand that Konishii teaches this limitation for the same reasons discussed above in the context of a counterpart limitation in claim 1. (Seee VII.A.7.) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 75

76 D. Claims 5, 23, and Claim 5, which depends from independent claim 1, recites: wherein the method is performed on a two-way basis, such that information is provided to each wireless device to indicate to each one of the requestor and the provider the direction between and proximity to the other one of the requestor and the provider. Claims 23 and 42 depend from independent claims 22 and 28 respectively and recite counterpart limitations. As set forth above, Konishi teaches the limitations of claims 1, 22, and 28. (See VII.A, VII.B, VII.C.) 114. Konishi additionally renders obvious that the information is provided on a two-way basis. In particular, Konishi discloses that the user and taxi position information is provided to a map on the user s wireless device, and that this information is updated. For example, the vehicle monitoring system 24 built into the information processing device 11 registers the vehicle identification and current position information. (UBER ) The customer position determination system 26 acquires the customer identification (i.e., telephone number) and current position and stores the information in the storage device 17. (UBER ) Konishi teaches using the customer position information and the vehicle position information to read out a map of a region centered on the customer s location, input the customer position and the current position of retrieved vacant vehicles, transmit the information to the customer s mobile phone, Petitioner Uber Technologies, Inc. Exhibit 1003, p. 76

77 and display the information on the mobile phone s screen. (UBER ) Konishi further discloses updating the map with the customer s location and the location of a vehicle that accepts a reservation until the customer enters the vehicle. (UBER , 0033.) 115. In addition, Konishi renders obvious that the user and taxi position information is provided to a map on the taxi s wireless device, and that this information is updated. For example, Konishi discloses that its system may be configured so that a mobile telephone set is mounted in each vehicle and is connected to the vehicle information terminal 12 so that the current position of the mobile telephone set may be determined by the same system as the customer position determination system 26. (UBER ) Konishi does not expressly disclose transmitting the map including the location of the customer and the vehicle for display on the mobile telephone mounted in the vehicle. However, because Konishi teaches that the vehicle s mobile phone is connected to the same position determination system as the customer s mobile phone, and because Konishi teaches generating a map that could be displayed on the mobile telephone of the customer, a person of ordinary skill in the art would have found it obvious also to transmit this information for display on the vehicle s mobile phone so that the taxi driver could drive to the customer. As addressed above in VII.A.5, a Petitioner Uber Technologies, Inc. Exhibit 1003, p. 77

78 person of ordinary skill in the art would understand that the map would indicate the direction between and proximity to the other one of the requestor and the provider. E. Claims 7 and Claims 7 and 33, depend from independent claims 1 and 28, respectively, and recite: wherein at least one of the first wireless device and the second wireless device is associated with an automobile. As explained above, Konishi teaches the limitations of claims 1 and 28. (See VII.A, VII.C.) Konishi further discloses that a wireless device is associated with an automobile. (UBER ( The vehicle allocation system 10 of the present invention is suited to the allocation of hired automobiles ), 0027, 0039 ( a mobile telephone set is mounted in each vehicle. ).) Therefore a person of ordinary skill in the art would understand that Konishi teaches that the second wireless device is associated with an automobile. F. Claims 10 And Claim 10 depends from claim 1 and recites: wherein causing receipt of information on the first wireless device and causing update of display of the map on the first wireless device include causing intermittent receipt of information on the first wireless device representing positional update of the second wireless device and causing intermittent update of display of the map on the first wireless device with the position associated with the first wireless device and updated Petitioner Uber Technologies, Inc. Exhibit 1003, p. 78

79 position of the second wireless device rendered thereon, to thereby track a progression of relative movement between the first wireless device and the second wireless device. Claim 36 depend from independent claim 22 and recites a counterpart limitation. As set forth above, Konishi teaches the limitations of claims 1 and 22. (See VII.A, VII.B.) 118. As discussed above in VII.B.5, Konishi further discloses that the vehicle location may be transmitted at distance intervals (UBER ) and that the time for a vehicle to reach a customer will be affected by variables (UBER ). Because the time it takes for a vehicle to travel 300 meters would vary, a person of ordinary skill in the art would understand that the updates would be received at irregular time intervals. Thus, a person of ordinary skill in the art would understand that Konishi s system would provide intermittent updates of the vehicle s location Additionally, a person of ordinary skill in the art would understand that the broadest reasonable interpretation of intermittent would be not continuous. Konishi discloses that [u]ntil the reserved vehicle reaches the customer position and the customer enters the vehicle (step 50), the current position of the reserved vehicle is read out from the database 19 by the vehicle monitoring system 24 at regular time intervals (step 51). (UBER ) The current position of the reserved vehicle, which approaches moment by Petitioner Uber Technologies, Inc. Exhibit 1003, p. 79

80 moment, is displayed on the map together with the customer position (step 48), transmitted to the mobile telephone set 13, and displayed as a navigation display (step 49). (UBER , see also UBER ) A person of ordinary skill in the art would understand that providing updates at regular time intervals and that displaying the customer s and vehicle s current positions moment by moment discloses causing intermittent update of display of the map on the customer s wireless device with the position associated with the customer s wireless device and updated position of the vehicle s wireless device rendered thereon, to thereby track a progression of relative movement between the customer s wireless device and the vehicle s wireless device under the broadest reasonable interpretation of the term Further, Konishi discloses that the customer and the vehicle have GPS enabled wireless devices, and that the updates are dependent on the position information provided by those devices. (UBER , 0028, 0039.) A person of ordinary skill in the art at the time of the purported invention would have understood that wireless devices, especially in moving vehicles, may have intermittent coverage. The wireless devices would be unable to send their current locations to the server when out of coverage, but then could resume when back in coverage. Thus, a person of ordinary skill in the art would understand that when Petitioner Uber Technologies, Inc. Exhibit 1003, p. 80

81 coverage is intermittent then the customer s mobile device would receive updates with the vehicle s location intermittently Additionally, Konishi discloses that after the customer makes a reservation and a vacant vehicle accepts the reservation, then the position information and map received by and rendered on the customer s mobile phone (i.e., the first wireless device) is updated to display the current position of the customer s mobile phone and the vehicle moment by moment until the customer enters the vehicle (UBER , 0033 ( The current position of the reserved vehicle, which approaches moment by moment, is displayed on the map together with the customer position (step 48), transmitted to the mobile telephone set 13, and displayed as a navigation display (step 49) ), 0035 ( the customer position and the current position of the vehicle that accepted the reservation are displayed as a navigation display on the screen of the mobile telephone set 13 moment by moment until the customer enters the vehicle. ).) A person of ordinary skill in the art would therefore understand that Konishi discloses that the method thereby tracks a progression of relative movement between the first wireless device (the customer s wireless device) and the second wireless device (the vehicle s wireless device) A person of ordinary skill in the art would thus understand that Konishi teaches causing receipt of information on the first wireless device and Petitioner Uber Technologies, Inc. Exhibit 1003, p. 81

82 causing update of display of the map on the first wireless device include causing intermittent receipt of information on the first wireless device representing positional update of the second wireless device and causing intermittent update of display of the map on the first wireless device with the position associated with the first wireless device and updated position of the second wireless device rendered thereon, to thereby track a progression of relative movement between the first wireless device and the second wireless device G. Claims 11 And Claim 11 depends from claim 1 and recites the additional limitation wherein at least one of the first wireless device and the second wireless device is embodied as a cell phone. As set forth above, Konishi teaches the limitations of claim 1. (See VII.A.) Konishi teaches the customer and the vehicle both having GPS enabled wireless devices (i.e., first and second wireless devices) that are used to provide the tracking. (UBER , 0039.) Konishi specifically discloses that the customer may have a mobile telephone set with a built-in GPS system. (UBER ) Therefore, a person of ordinary skill in the art would understand that Konishi teaches that at least one of the first wireless device and the second wireless device is embodied as a cell phone Claim 37 recites [t]he apparatus of claim 28, embodied as instructions resident on non-transitory memory of a cell phone. As set forth Petitioner Uber Technologies, Inc. Exhibit 1003, p. 82

83 above, Konishi teaches the limitations of claim 28. (See VII.C.) Because Konishii discloses that that the customer s wireless device is a mobile phone, a person of ordinary skill in the art would understand that the apparatus of claim 28 could be embodied as instructions on a mobile phone so that software could perform the steps disclosed in Konishi. A personn of ordinary skill in the art would further understand d that the instructionss would bee stored on a memory of the mobile phone that would remain after the device is powered off. Thus, a person of ordinary skill in the art would understand that Konishi teaches the apparatus of claim 28 embodied as instructions resident on non-transitory memory of a cell phone. H. Claim Claim 40 depends from claim 28 and further recites wherein followed by four additional limitations. As set forth above, Konishi teaches the limitations of claim 28. (Seee VII.C.) Konishi also teaches each of the following limitations. 1. the requestor is associated with the first wireless devicee and the provider is associated with the second wireless device; 126. Konishi teaches that the customer (i.e., requestor) is associated with a first wireless device (UBER ) and thee vacant vehicle (i.e., the provider) is associated with a second wireless device (UBER ). Petitioner Uber Technologies, Inc. Exhibit 1003, p. 83

84 2. the apparatus is embodiedd as instructions stored on non- transitory memory of the first wireless device and further comprise instructions that when executed are operable to launch an application on the first wireless device in association with a request by the requestor for the desired service; 127. Konishi teaches that the operation of the vehicle allocation system 10 starts when the customer selects a vehicle allocation service with the mobile telephone set 13. (UBER , Figure 2.) The customer may make a reservation by selecting reservation link on the screen and pressing a confirm button. (UBER ) For a customer too select a vehicle allocation service and make a reservation by selecting a reservation n link with a mobile phone (i.e., the first wireless device), a person of ordinary skill in the art would understand that the mobile phone would include instructions stored on a non-transitory memory that, when executed, operatee to launch an application on the phone. The launch of the application would therefore be in association n with the customer ss request for the desired servicee (i.e., a ride). A person of ordinary skill in the art would therefore understand that Konishi discloses this claim limitation. 3. the provider and the second wirelesss device are selected in association with the requestt by the requestor for the desired service; 128. Konishi discloses that in response too the customer selecting a vehicle allocation service with the mobile phone (UBER ) a vehicle (or multiple vehicles) within a prescribed range of the customer s search conditionn are Petitioner Uber Technologies, Inc. Exhibit 1003, p. 84

85 displayed along with the map (UBER-1012 link on the screen and pressing a 0031), and the customer may make a reservation by selecting reservation confirm button. (UBER ) The vehicle can accept the reservation. (UBER , 0039.) The vehicle that accepts the reservation is the provider of the service (i.e., the ride). A person of ordinary skill in the art would thus understand that both the vehicle and the wirelesss device mounted in the vehiclee are thus selected in association with the customer request. 4. the instructions when executed are operable to generatee the display in a manner operable to convey to the requestor cartographic location of thee providerr as a prelude to rendering the desired service Konishi discloses that when a customer searches for available vehicles, the customer s mobile phone displays the current positions of the customer and available vehicles located within a prescribed range from the current position of the customer and transmits the map too an information terminal of the customer. (UBER ) Konishi teaches initially rendering the location of all vacant vehicles within the prescribed rangee prior to a vehicle accepting the reservation. (UBER ) Once a vehicle accepts the reservation, the other vacant vehicles may be deleted from the map while the current location of the reserved vehicle may be updatedd until the customer enters the vehicle (i.e., when rendering the service commence es). (UBER , 0035.) Konishi s system may also be configured so that the current position of the reserved vehicle Petitioner Uber Technologies, Inc. Exhibit 1003, p. 85

86 is displayed while differentiating the current position of the reserved vehicle from the positions of other vacant vehicles by adding a shape or color differing from those of the positions of other vacant vehicles. (UBER ) A person of ordinary skill in the art would thus understand that the software on the customer s mobile phone would include instructions operable to generate a display to convey to the customer (i.e., the requestor) the cartographic location of a vehicle (i.e., the provider) as a prelude to the vehicle picking up the customer (i.e., rendering the desired service). I. Claim Claim 41 recites [t]he apparatus of claim 28, at least partially embodied as network-resident instructions stored on non-transitory serveraccessible media. As set forth above, Konishi teaches the limitations of claim 28. (See VII.C.) Konishi further discloses a system that includes a mobile phone associated with a customer, mobile phones associated with vehicles, and an information processing device 11 serving as the core of the system. (UBER , 0028, 0039.) Konishi teaches that [t]he information processing device 11 executes a program. (Id ) A person of ordinary skill in the art would understand that the information processing device is a server located on a network and would include instructions stored on non-transitory media that it would be able to access to provide the vehicle allocation services. Petitioner Uber Technologies, Inc. Exhibit 1003, p. 86

87 VIII. GROUND 2: KONISHI AND RAUTILA RENDER CLAIMS 1, 4-5, 7, 10-11, 22-23, 28, 31, 33, 36-37, AND OBVIOUS 131. As explained above in Ground 1, I believe that a person of ordinary skill would have understood that Konishi teaches, suggests, or discloses every limitation of claims 1, 5, 7, 10-11, 22-23, 28, 33, 36-37, and of the 647 patent. (See VII.) For example, a person of ordinary skill in the art would understand that the various claimed method steps are invoked in response to the running of an application on the mobile device. However, Konishi does not expressly disclose the source of the software that performs the disclosed functions. I believe a person of ordinary skill in the art would also find Konishi and Rautila disclose, teach, or suggest every limitation of claims 1, 5, 7, 10-11, 22-23, 28, 33, 36-37, and 40-42, as well as claims 4 and As explained below, a person of ordinary skill in the art would have understood that Konishi and Rautila teach, suggest, or disclose every limitation of claims 4 and A person of ordinary skill would have considered Konishi in conjunction with Rautila. Konishi and Rautila are in the same field of endeavor, as both relate to software provided on mobile phones. For example, as explained above ( VII.G), a person of skill in the art would understand that the various features performed by the mobile telephone set 13 of Konishi are performed by a software application on the mobile device. (UBER (disclosing that the Petitioner Uber Technologies, Inc. Exhibit 1003, p. 87

88 operation of the vehicle allocation system 10 starts when the customer selects a vehicle allocation service with the mobile telephone set 13. ) Similarly, Rautila relates to a system, method and computer program for a user of a mobile device to download large amounts of digital data, including software. (UBER-1025 Abstract, 1:62-63 (disclosing download[ing] a software file using a cellular phone. ).) Thus, a person of ordinary skill in the art would have been motivated to combine their teachings to create a more robust system. For example, a person of ordinary skill in the art would understand how to incorporate various features described in Rautila into the system taught by Konishi and would have had an expectation of success Additionally, a person of ordinary skill in the art would have considered Konishi in conjunction with Rautila because Konishi discloses transmitting the position information from a mobile device to a server and Rautila discloses an invention that uses wireless application protocol ( WAP ), which a person of ordinary skill in the art would understand can be used for transmitting information relating to the location of a mobile device. Specifically, Konishi discloses that when a customer selects a vehicle location service, the information processing device 11 executes a program of the customer position determination system 26, receives the telephone number and the latitude and longitude of the current position of the accessing mobile telephone set 13 by asking the computer Petitioner Uber Technologies, Inc. Exhibit 1003, p. 88

89 20 and stores the information in the storage device 17. (UBER ) A person of ordinary skill in the art would have understood that [k]nown communication networks typically include a WAP [wireless application protocol] client device transmitting and receiving information from a server through a WAP gateway. (UBER ) A person of ordinary skill in the art would have recognized that the WAP is useful for transmitting information indicating the location of a mobile phone. (UBER ( For example, the fields associated with the location information for locating client device 202 could include, for example, an identification (ID) field 302, a country field 304, a city field 306, a zip code field 308, a cell ID field 310, and a latitude/longitude field 312 ).) Because Konishi teaches transmitting location information between a mobile device and a server, and a person of ordinary skill in the art would have understood the WAP was well-known for transmitting location information, a person of ordinary skill in the art could have combined known elements to reach a predictable result by implementing the teachings of Konishi with the WAP. Rautila further discloses that a WAP capable phone may be used to download and launch applications. (UBER :49-55 (discloses that a person without a landline could order a video game from a web site on the other side of the planet and download it into his palm computer connected to a cellular or standalone WAP [Wireless Access Protocol] or HTML (Hypertext Markup Language) capable Petitioner Uber Technologies, Inc. Exhibit 1003, p. 89

90 phone and play the game on the spot. ).) Thus, a person of ordinary skill in the art would have understood that they could have combined the well-known WAP capable phone disclosed in Rautila as being capable of downloading and launching an application with Konishi s system Further, Konishi teaches software running on a mobile telephone set 13 but is silent regarding the source of the software. For example, Konishi does not specify whether the software running on mobile telephone set 13 is preinstalled on the phone or is obtained and installed by the user. Thus, a person of ordinary skill in the art would have investigated references that teach how software may be installed on mobile phones. A person of ordinary skill in the art would have found Rautila because Rautila discloses a method for downloading and installing software, including games, to a mobile phone. (Id.; UBER :49-55 (disclosing order[ing] a video game and download[ing] it into [an] HTML (Hypertext Markup Language) capable phone and play[ing] the game on the spot. ).) Thus, a person of ordinary skill in the art would have come across Rautila based on the disclosure of Konishi and would have been motivated to combine the references teachings. A. Claims 1, 5-7, 10-11, 22-23, 28, 32-33, 36-37, and Konishi teaches the elements of claims 1, 5-7, 10-11, 22-23, 28, 32-33, 36-37, and for the reasons expressed above. (See VII.) In particular, Petitioner Uber Technologies, Inc. Exhibit 1003, p. 90

91 as explained above (see, e.g., VII.A.6), a person of ordinary skill in the art would understand that Konishi s various method steps are invoked in response to the launching an application on the mobile telephone set 13. To the extent the Board finds that Konishi does not render obvious to a person of ordinary skill in the art the limitation of claim 1 reciting that the method is invoked responsive to launching an application on the first wireless device, this limitation would have been obvious over Konishi in view of Rautila Rautila teaches that non-native software, including a game, may be downloaded and installed on a mobile phone. (UBER :49-55, 1:62-63.) For example, Rautila discloses that the software may be downloaded from an electronic shop server to a user s mobile phone. (UBER :41-45.) Thus, it would have been obvious to a person of ordinary skill in the art to obtain the software running on Konishi s mobile telephone set 13 using Rautila s electronic shop server. Because the software is non-native, a person of ordinary skill in the art would understand that a user would need to launch the application to invoke the various method steps disclosed by Konishi. For the same reasons, Konishi in view of Rautila render obvious the similar limitations of claim 22 ( selecting in association with an application launched ), claim 28 ( invoked responsive to launching an application ), and claim 40 ( instructions operable to launch an application ). Petitioner Uber Technologies, Inc. Exhibit 1003, p. 91

92 B. Claims 4 and Claim 4, which depends from independent claim 1 recites: wherein the application is non-native to the first wireless device and is to be selectively downloaded to and installed on the first wireless device. Claim 31, which depends from independent claim 28, recites substantially the same limitation. A person of ordinary sill in the art would understand that Konishi teaches the limitations of claims 1 and 28 ( VII.A, VII.B) and the teachings of Konishi and Rautila render claims 1 and 28 obvious ( VIII.A.) 139. Rautila teaches that non-native software, including a game, may be downloaded and installed on a mobile phone. (UBER :49-55, 1:62-63.) For example, Rautila discloses that the software may be downloaded from an electronic shop server to a user s mobile phone. (UBER :41-45.) As discussed above, it would further have been obvious to a person of ordinary skill in the art to obtain the software running on Konishi s mobile telephone set 13 using Rautila s electronic shop server and install it thereon. ( VIII.A.) A person of ordinary skill would therefore have found it obvious to implement Konishi s system wherein the application is non-native to the first wireless device and is to be selectively downloaded to and installed on the first wireless device. IX. GROUND 3: KONISHI AND ADAMCZYK RENDER CLAIMS 6, 24, AND 32 OBVIOUS Petitioner Uber Technologies, Inc. Exhibit 1003, p. 92

93 140. As explained below, a person of ordinary skill in the art would have understood that Konishi and Adamczyk teach, suggest, or disclose every limitation of claims 6, 24, and A person of ordinary skill in the art would have found it obvious to combine Konishi s and Adamczyk s teachings. Konishi and Adamcyzk are both directed to the same problem: matching a customer with a vehicle. A person of ordinary skill in the art would be motivated to combine Konishi with Adamczyk because doing so would have been a simple combination of prior-art elements according to known methods to yield the predictable result of allowing voice communication between a ride requestor and ride provider. Konishi discloses that a system in which a customer with a mobile phone may make a reservation and a vehicle with a mobile phone may then travel to the customer. (UBER , 0035, 0039.) Adamczyk also discloses a system in which a customer with a mobile phone may request a ride (UBER :56-60), and discloses establishing a voice communication between the customer and a candidate driver (UBER :24-30, 10:33-44). There would be no technical difficulties to overcome because Konishi s system already includes the customer and driver having mobile phones and technology configured to allow the information processing device to communicate with the customer and the vehicle. Thus, combining the references would have been obvious to a person of ordinary skill in Petitioner Uber Technologies, Inc. Exhibit 1003, p. 93

94 the art, who would have had an expectation of success. A person of ordinary skill in the art would be motivated to combine the references teachings because, for example, using Konishi s phone-based vehicle allocation system to provide voice communication between the customer and driver as disclosed by Adamczyk would allow a driver having difficulty finding a customer to call the customer s mobile phone. A. Claims 6, 24, and Claim 6 depends from claims 1 and recites wherein the method further comprises providing selective, direct voice communication between the requestor and the provider. Claims 24 and 32 depend from claims 22 and 28, respectively, and recite counterpart limitations. As expressed above, a person of ordinary skill in the art would understand that Konishi teaches the limitations of claims 1, 22, and 28. (See VII.A, VII.B, VII.C.) Adamczyk teaches that after a driver is identified, a voice connection may be established between the customer and driver. (UBER :33-44 ( After a candidate driver is identified, a communication connection is established between the passenger and the candidate driver (Block 630). The connection may be a voice connection ); 3:30-34 ( establishing a communication connection includes establishing a voice connection between the passenger and a candidate driver to negotiate a payment for the trip ), 9:26-30 ( The passenger may be provided the necessary Petitioner Uber Technologies, Inc. Exhibit 1003, p. 94

95 identification, for example, by establishing a voice connection between the passenger and the candidate driver so they may negotiate a payment or other agreement for the trip. ).) It would have been obvious to a person of ordinary skill in the art to allow selective, direct voice communication between the requestor and provider, as taught by Adamczyk, with Konishi s system. X. GROUND 4: KONISHI AND MAKOTO RENDER CLAIMS 8, 9, 25, 34, 35, AND 45 OBVIOUS 143. As explained below, a person of ordinary skill in the art would have understood that Konishi and Makoto teach, suggest, or disclose every limitation of claims 8, 9, 25, 34, 35, and A person of ordinary skill in the art would have found it obvious to combine Konishi and Makoto s teachings. Konishi and Makoto both relate to displaying one s own location and additional location information on a map on a mobile device. For example, Konishi discloses that the current position of the customer and the current positions of the vacant vehicles located within the prescribed range are displayed on a map and transmitted to the customer information terminal. (UBER-1012 Abstract.) Similarly, Makoto discloses that [i]n a processing unit 14 of mobile phone device 41, the map information required to display the location of mobile phone devices 41 and 42 on a map is specified. (UBER ) Incorporating features described in Makoto into the system taught by Konishi would have been an obvious step with predictable results and a Petitioner Uber Technologies, Inc. Exhibit 1003, p. 95

96 simple matter of design choice because Konishi s system included the components to implement Makoto s teachings. A person of ordinary skill in the art would have been motivated to add Makoto s time to permit permission requirement to Konishi s system because the benefit of placing a time limit on location sharing could be predictably applied to any location tracking system Further, Konishi and Makoto relate to disabling location sharing in certain conditions. Konishi teaches that once a reservation is made in Konishi s system, the vacant vehicles other than the reserved vehicle, which is the vacant vehicle that accepted the reservation, are deleted from the map, and the current position of only the reserved vehicle is displayed on the map together with the customer position. (UBER ) Makoto teaches a mobile two-way mapping system that includes a permission requirement specifying a time to permit the provision of location information. (UBER ) A person of ordinary skill in the art would have thus found it obvious to implement the conditions for disabling location sharing disclosed in Makoto into Konishi s system. A person of ordinary skill in the art would have had a reasonable expectation of success because it merely involves using Makoto s time to permit permission requirement for its intended purpose in a similar system. A. Claims 8, 25, and 34 Petitioner Uber Technologies, Inc. Exhibit 1003, p. 96

97 146. Claims 8 and 25 depend from claims 1 and 22, respectively, and recite wherein the method further comprises initiating a function to stop the receiving of information on the first wireless device representing positional update of the second wireless device upon occurrence of an event. Claim 34 depends from claim 28 and recites a counterpart limitation. As expressed above, a person of ordinary skill in the art would understand that Konishi teaches the limitations of claims 1, 22, and 28. (See VII.A, VII.B, VII.C.) Makoto discloses permission requirements information specifying the time to permit the provision of the location information, the communication device of the other party, or the other party s attribute, for example. (UBER ) If the time has exceeded the interval of the time to permit, then the software disables transmission of a map and instead generates a notice for the purpose of notifying that there is no location information that can be provided and transmits the notice to mobile communication device (UBER , 0130.) A person of ordinary skill in the art would understand that Makoto therefore disables transmission of a map representing the plotted position of a specific one of the multiple users if the predetermined time to permit period has been exceeded. A person of ordinary skill in the art would have found it obvious to modify the system disclosed by Konishi in view of Makoto s teachings to stop transmitting the location Petitioner Uber Technologies, Inc. Exhibit 1003, p. 97

98 information representing positional updates of the location of the reserved vehicle after the expiration of a predetermined time interval Further, Konishi discloses that the customer may have a mobile telephone set with a built-in GPS system. (UBER ) A person of ordinary skill in the art would understand that the customer could turn off its mobile telephone. Under the broadest reasonable interpretation of the claim, a person of ordinary skill in the art would understand that the customer turning off its phone would be an event to initiate a function to stop the receiving of information on the first wireless device representing positional update of the second wireless device upon occurrence of an event. B. Claims 9 and Claims 9 and 35 depend from claims 8 and 34, respectively, and further recite wherein the event is a timeout, such that the function is automatically invoked following passage of a predetermined interval of time. Konishi and Makoto render claims 8 and 34 obvious. (See X.A.) Additionally, Makoto discloses that its location service providing device 305 reads from the storage unit 321 the location display permission requirement information (the permission requirement information of the present invention) corresponding to the location information of mobile communication devices other than the mobile communication device and a determination is made as to whether the Petitioner Uber Technologies, Inc. Exhibit 1003, p. 98

99 permission requirements specified by the location display permission requirement information have been fulfilled. (UBER ) Makoto discloses that the permission requirements are information specifying the time to permit the provision of the location information. (Id.) A person of ordinary skill in the art would understand that Makoto teaches that if a time limit has not expired (UBER ), the location information services providing device transmits the location information for a group member to the mobile communication device that sent the request (UBER ). A person of ordinary skill in the art would further understand that if the time limit has expired (UBER ), the location information services providing device generates a notice for the purpose of notifying that there is no location information that can be provide. (UBER ) Thus, a person of ordinary skill in the art would understand that Makoto teaches wherein the event is a timeout, such that the function is automatically invoked following passage of a predetermined interval of time. C. Claim Claim 45, which depends from claim 28, recites the instructions when executed are to cause the at least one machine to check a subscription status associated with the requestor prior to the receipt of the information on the first wireless device representing the positions. As explained above, Konishi teaches the limitations of claim 28 to a person of ordinary skill in the art. (See VII.C.) Petitioner Uber Technologies, Inc. Exhibit 1003, p. 99

100 Makoto discloses that a user of the communication device registers in advance with the administrator of the service providing device for receiving the service before transmitting the service request, and an administrator of the service providing device collects a fee from a user of the communication device according to the aforementioned registration. (UBER-1009 at claims 43 and 44.) A person of ordinary skill in the art would therefore understand that Makoto teaches checking the registration information before transmitting location information to the first wireless device. Thus, a person of ordinary skill in the art would have found it obvious to implement the system disclosed in Konishi by checking a subscription status of the user (whether the user has registered and paid the fee) before transmitting the service request (to provide a taxi) as taught by Makoto. XI. GROUND 5: KONISHI AND KNOTTS RENDER CLAIMS 13, 27, AND 39 OBVIOUS 150. As explained below, a person of ordinary skill in the art would have understood that Konishi and Knotts teach, suggest, or disclose every limitation of claims 13, 27, and As explained above in Ground 1, I believe that a person of ordinary skill would have understood that Konishi teaches, suggests, or discloses every limitation of claims 1, 5-7, 10-11, 22-23, 28, 32-33, 36-37, and of the 647 patent. (See VII.) Konishi does not expressly disclose the names of the carriers to which its mobile telephone sets connect to receive service or expressly state that Petitioner Uber Technologies, Inc. Exhibit 1003, p. 100

101 its system operated with mobile telephones from multiple carriers. As explained below, Knotts expressly discloses communication between different cell phone carriers. Thus, a person of ordinary skill in the art would find Konishi and Knotts disclose, teach, or suggest every limitation of claims 13, 27, and A person of ordinary skill would have considered Konishi in conjunction with Knotts. Both references relate to transmitting data to a mobile device over an existing telecommunications carrier s network. For example, Konishi s communication device 18 is connected to a computer of an existing telecommunications carrier, for example, and is connected to the mobile telephone set 13 via the computer 20. (UBER ) Similarly, Knotts relates generally to wireless carriers, Internet service providers (ISPs), and information content delivery services/providers. (UBER :13-15.) Knotts discloses that it was known to provide inter-carrier messaging to mobile devices. (UBER-1026 Abstract.) A person of ordinary skill in the art would have been motivated to apply the known technique disclosed in Knotts to the system of Konishi because the benefit of providing a multi-carrier system could be predictably applied to Konishi s system Further, while Konishi discloses a system that includes a communication device connected to a computer of an existing telecommunications carrier (UBER ), Konishi does not expressly state Petitioner Uber Technologies, Inc. Exhibit 1003, p. 101

102 that its system operates with mobile telephones from different telecommunications carriers. A person of ordinary skill in the art would have investigated whether it was known to provide systems for multi-carrier communications. A person of ordinary skill in the art thus would have found Knotts, which discloses an intercarrier short messaging service. (UBER-1026 Abstract). Because Knotts shows that it was known to route communications to different cell phone carriers by utilizing routing tables to match communication methods and syntax, a person of ordinary skill in the art would have found it obvious to implement a system as disclosed in Konishi where the customer s mobile device and a vehicle s mobile device are associated with different carriers in light of Knotts. A. Claims 13, 27, and Claim 13 depends from claim 1 and further recites wherein the method is adapted for operation where each of the first wireless device and the second wireless device are associated with different cell phone carriers. Claims 27 and 39 depend from claims 22 and 28, respectively, and recite counterpart limitations. A person of ordinary skill in the art would understand that Konishi teaches the limitations of claims 1, 22, and 28. (See VII.A, VII.B, VII.C.) 155. Konishi does not expressly state that its system operated with mobile telephones from different phone carriers. Knotts, however, teaches a system for allowing inter-carrier communications. (UBER-1026 Abstract, 2:40-50, 10:42-55; Petitioner Uber Technologies, Inc. Exhibit 1003, p. 102

103 XI.) Given the teachings of Knotts, a person of ordinary skill in the art would have found it obvious to implement a system as disclosed in Konishi where the customer s mobile device and a vehicle s mobilee device are associated with different carriers. (See XI.) XII. GROUND 6: MITSUOKA RENDERS CLAIMS 1, 5-7, 10-11, 22-24, 28, 32-33, 36-37, AND OBVIOUS 156. As explained below, a person of ordinary skilll would have understood that Mitsuoka teaches, suggests, or discloses every limitation of claims 1, 5-7, 10-11, 22-24, 28, 32-33, 36-37, and of the 647 patent. A. Claim 1 1. A method of tracking proximity of position associated with a first wireless device relative to a position of a second wireless device, wherein onee of the first wireless device and the second wireless device iss associated with a provider of a desired service and the other of the first wireless device and the second wireless device iss associated with a requestor of the desired service, the method comprising: 157. Mitsuoka discloses a method of tracking the proximity of position between a wireless device of a customer seekingg a desired service (e.g., a ride) and a service providerr offering the desired service. (UBER ( a map of the vicinity of the user is displayed on the display unit of the user s portable terminal 1, along with taxis 3A, 3B currently travelling att certain points on that map, as shown in FIG. 4. ).) As shown below, Figure 1 illustrates that the customer s wirelesss device is a first wireless device associated with a requestor of a desiredd Petitioner Uber Technologies, Inc. Exhibit 1003, p. 103

104 service and the taxi s wireless device is a secondd wireless device associated with a provider of a service. first wireless device associated with the requestor of a service second wireless device associated with the provider of a servicee Figure 16: UBER-1015 Figure 1 (Annotated) 158. Mitsuoka teaches that while the taxii 3A travels to the user, the ASP [Application Service Provider] 4 receives input of taxi 3A location informationn successively transmitted from taxi 3A, adds an image of the taxi to the corresponding location on the vicinity map, and delivers this display data in real time to the portable terminal 1, as a result of which the status of the requested taxi heading to one s own current location is displayed in real time along with a map of Petitioner Uber Technologies, Inc. Exhibit 1003, p. 104