IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AMAZON.COM, INC. & LENOVO (UNITED STATES) INC., - vs.

Transcription

1 Paper No. 1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AMAZON.COM, INC. & LENOVO (UNITED STATES) INC., - vs. - Petitioners PRAGMATUS MOBILE LLC, Patent Owner Patent No. 8,466,795 Issued: June 18, 2013 Inventors: Mark Hoffman, Judd Hoffman, Ann Hoffman, David Doe Title: PERSONAL SECURITY AND TRACKING SYSTEM Inter Partes Review No. PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,466,795 UNDER 35 U.S.C AND 37 C.F.R , April 22, 2015 Mail Stop Patent Board Patent Trial and Appeal Board P.O. Box 1450, Alexandria, VA

2 TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1))... 1 A. Real Parties-in-Interest (37 C.F.R. 42.8(b)(1))... 1 B. Notice of Related Matters (37 C.F.R. 42.8(b)(2))... 1 C. Designation of Lead and Backup Counsel (37 C.F.R. 42.8(b)(3))... 2 D. Service Information (37 C.F.R. 42.8(b)(4))... 3 III. GROUNDS FOR STANDING UNDER 37 C.F.R (a)... 3 IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b)... 4 A. Effective Filing Date of the 795 Patent... 4 B. There Is a Reasonable Likelihood that at Least One Claim of the 795 Patent is Unpatentable under 35 U.S.C V. OVERVIEW OF THE 795 PATENT... 5 VI. CONSTRUCTION OF THE CHALLENGED CLAIMS (37 C.F.R (b)(3))... 7 VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE A. The Portable Signaling Unit for Tracking Individuals or Objects Described and Claimed in the 795 Patent Was Well-Known B. U.S. Patent No. 5,497,149 ( Fast )... 9 C. U.S. Patent No. 5,416,730 ( Lookofsky ) D. U.S. Patent No. 5,731,757 ( Layson ) E. U.S. Patent No. 5,276,916 ( Pawlish ) F. Specific Grounds for the Petition i

3 TABLE OF CONTENTS (CONTINUED) Page 1. Ground 1: Fast Renders Obvious Claims 1-15, 17-21, 27, and 29 of the 795 Patent a. Fast Renders Obvious Claim b. Fast Renders Obvious Claim c. Fast Renders Obvious Claim d. Fast Renders Obvious Claim e. Fast Renders Obvious Claims 5, 6, and f. Fast Renders Obvious Claim g. Fast Renders Obvious Claim h. Fast Renders Obvious Claim i. Fast Renders Obvious Claim j. Fast Renders Obvious Claim k. Fast Renders Obvious Claims l. Fast Renders Obvious Claims m. Fast Renders Obvious Claims 20 and n. Fast Renders Obvious Claim o. Fast Renders Obvious Claim Ground 2: A Combination of Fast and Lookofsky Renders Obvious Claim 16 of the 795 Patent Ground 3: A Combination of Fast and Layson Renders Obvious Claims and 28 of the 795 Patent ii

4 TABLE OF CONTENTS (CONTINUED) Page a. A Combination of Fast and Layson Renders Claims 22 and 28 Obvious b. A Combination of Fast and Layson Renders Claim 23 Obvious c. A Combination of Fast and Layson Renders Claim 24 Obvious d. A Combination of Fast and Layson Renders Claim 25 Obvious e. A Combination of Fast and Layson Renders Claim 26 Obvious Ground 4: A Combination of Fast, Lookofsky and Layson Renders Obvious Claims 30, 31, and 33 of the 795 Patent a. A Combination of Fast, Lookofsky, and Layson Renders Claim 30 Obvious b. A Combination of Fast, Lookofsky, and Layson Renders Claim 31 Obvious c. A Combination of Fast, Lookofsky, and Layson Renders Claim 33 Obvious Ground 5: A Combination of Fast, Lookofsky, Layson, and Pawlish Renders Obvious Claim 32 of the 795 Patent VIII. CONCLUSION iii

5 TABLE OF AUTHORITIES Page(s) CASES BAE Sys. Info. & Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, No. IPR , Paper No. 15 (PTAB Jul. 3, 2013)... 3 Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004)... 7 In re Certain Wireless Devices, Including Mobile Phones and Tablets II, Inv. No. 337-TA-905, Order No. 14 (ITC June 2, 2014)... 2, 8 In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006)... 37, 42, 48, 51 In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)... 7 Kamada, Ltd. v. Grifols Therapeutics Inc., No. IPR , Paper No. 8 (PTAB Dec. 18, 2014) KSR Int l Co. v. Teleflex Inc., 550 U.S. 398 (2007)... passim Oracle Corp. v. Click-to-Call Techs. LP, No. IPR , Paper No. 40 (PTAB Dec. 18, 2015)... 3 Toyota Motor Corp. v. Am. Vehicle Scis., No. IPR , Paper No. 14 (PTAB Jan. 13, 2014) STATUTES 35 U.S.C. 102(a) U.S.C. 102(b)... 4, 5 35 U.S.C. 102(e)... 5 iv

6 TABLE OF AUTHORITIES (CONTINUED) Page(s) 35 U.S.C , 5 35 U.S.C , 8 35 U.S.C U.S.C U.S.C. 315(b)... 3 REGULATIONS 37 C.F.R passim v

7 EXHIBIT LIST (37 C.F.R (e)) Exhibit Ex Ex Ex Ex Ex Ex Ex Ex Ex Description U.S. Patent No. 8,466,795 to Hoffman, et al. U.S. Patent No. 5,497,149 to Fast U.S. Patent No. 5,416,730 to Lookofsky U.S. Patent No. 5,731,757 to Layson, Jr. U.S. Patent No. 5,276,916 to Pawlish, et al. In re Certain Wireless Devices, Including Mobile Phones and Tablets III; Inv. No. 337-TA-942, Order No. 14 (filed June 2, 2014) Neil Sclater & John Markus, McGraw-Hill Electronics Dictionary 288, 290 (6th ed. 1997) U.S. Patent No. 6,121,922 to Mohan Declaration of Scott Andrews vi

8 I. INTRODUCTION In accordance with 35 U.S.C and 37 C.F.R , , inter partes review is respectfully requested of claims 1-33 of United States Patent No. 8,466,795, titled Personal Security and Tracking System ( the 795 patent ) owned by Pragmatus Mobile LLC ( Pragmatus or Patent Owner ). (Ex ) This petition demonstrates that there is a reasonable likelihood that the Petitioners will prevail on at least one of the claims challenged in the petition. Claims 1-33 of the 795 patent should be canceled as unpatentable. II. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1)) A. Real Parties-in-Interest (37 C.F.R. 42.8(b)(1)) The real parties-in-interest for this petition are Amazon.com, Inc.; Lenovo (United States) Inc.; Lenovo Group Ltd.; and Lenovo Holding Company Inc. B. Notice of Related Matters (37 C.F.R. 42.8(b)(2)) The 795 patent is presently the subject of the following patent infringement lawsuits brought by Pragmatus in the District of Delaware: Case No. 14-cv against Amazon.com, Inc.; Case No. 14-cv against ASUSTek Computer Inc., et al.; Case No. 14-cv against Lenovo Holding Company Inc., et al.; Case No. 14-cv against NEC Corp. of Am., et al. It is also presently the subject of an International Trade Commission ( ITC ) investigation titled In re Certain Wireless Devices, Including Mobile Phones and Tablets III, Inv. No. 337-TA-942. The 795 patent was the subject of the following, now terminated, lawsuits filed by Pragmatus in the District of Delaware: Case No. 13-cv against Dell Inc.; Case No. 13-cv against Hewlett-Packard Co.; Case No. 13-cv against Samsung 1

9 Elecs. Co. Ltd., et al.; Case No. 13-cv against ZTE (USA) Inc., et al.; Case No. 13- cv against Nokia Corp., et al.; Case No. 13-cv against ASUSTek Computer Inc., et al.; Case No. 13-cv against Casio Computer Co. Ltd., et al.; Case No. 13-cv against Kyocera Commc ns Inc.; Case No. 13-cv against Lenovo Group Ltd., et al.; Case No. 13-cv against Amazon.com, Inc.; Case No. 13-cv against Sony Mobile Commc ns (USA) Inc., et al.; Case No. 14-cv against ZTE Corp., et al.; Case No. 14-cv against Sony Mobile Commc ns (USA) Inc., et al.; Case No. 14-cv against Samsung Elecs. Co. Ltd., et al.; Case No. 14-cv against Nokia Corp., et al.; Case No. 14-cv against Hewlett-Packard Co.; and Case No. 14-cv against Dell Inc. The 795 patent was also the subject of the following terminated proceedings: a declaratory judgment action filed by ZTE (USA) Inc. in the Southern District of California, Case No. 14-cv against Pragmatus Mobile, LLC; and ITC investigations In re Certain Wireless Devices, Including Mobile Phones and Tablets II, Inv. No. 337-TA-905 and In re Certain Wireless Devices, Including Mobile Phones and Tablets, Inv. No. 337-TA-889. The same patent was also the subject of two prior inter partes review petitions, ZTE (USA), Inc. v. Pragmatus Mobile LLC, No. IPR and Samsung Elecs. Am., Inc., et al. v. Pragmatus Mobile LLC, Nos. IPR , IPR , all terminated before institution. C. Designation of Lead and Backup Counsel (37 C.F.R. 42.8(b)(3)) Petitioners designate Saina Shamilov, Reg. No. 48,266, as lead counsel and J. David Hadden, Reg. No. 40,629, as backup counsel, both with Fenwick & West LLP, 801 California Street, Mountain View, CA 94041, telephone: (650) , fax: (650)

10 D. Service Information (37 C.F.R. 42.8(b)(4)) Service of any documents via hand-delivery may be made at the postal mailing address of lead and back-up counsel identified above with courtesy copies to the addresses and Petitioners consent to electronic service at III. GROUNDS FOR STANDING UNDER 37 C.F.R (a) Petitioners certify that the 795 patent is eligible for inter partes review and that Petitioners are not barred or estopped from requesting an inter partes review challenging the claims on the grounds identified herein. Patent Owner s dismissals without prejudice of Pragmatus Mobile LLC v. Lenovo Group Ltd., et al., No. 13-cv (D. Del., filed Oct. 15, 2013) and Pragmatus Mobile LLC v. Amazon.com, Inc., No. 13-cv (D. Del., filed Oct. 28, 2013) on May 22, 2014 and May 23, 2014, respectively, do not bar this petition. See Oracle Corp. v. Click-to-Call Techs. LP, No. IPR , Paper No. 40 at 4 (PTAB Dec. 18, 2013) (rejecting assertion that Petitioners were barred from pursuing an inter partes review under 35 U.S.C. 315(b) because both the Federal Rules of Civil Procedure and Federal Circuit precedent treat a dismissal without prejudice as something that, de jure, never existed ); see also BAE Sys. Info. & Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, No. IPR , Paper No. 15 at 3 (PTAB July 3, 2013) ( [V]oluntary dismissal of an infringement action nullifies the effect of the alleged service of the complaint on the petitioner. ). 3

11 IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b) A. Effective Filing Date of the 795 Patent The 795 patent issued from U.S. Patent Application No. 13/404,977 filed on February 24, The patent claims priority to several continuation and continuation-in-part applications with the earliest priority application having a filing date of January 21, For purposes of this petition only, the effective filing date of all the challenged claims is no earlier than January 21, B. There Is a Reasonable Likelihood that at Least One Claim of the 795 Patent is Unpatentable under 35 U.S.C The challenged claims 1-33 are generally directed to a portable signaling unit or cellular device, which the specification describes are for rendering an alarm and tracking an individual in distress. The challenged claims are unpatentable in view of the following patents: U.S. Patent No. 5,497,149 filed on February 21, 1995, issued on March 5, 1996, and titled Global Security System ( Fast ), which is prior art to the 795 patent under at least 35 U.S.C. 102(a) (Ex. 1002); U.S. Patent No. 5,416,730 filed on November 19, 1993, issued on May 16, 1995, and titled Arm Mounted Computer ( Lookofsky ), prior art to the 795 patent under at least 35 U.S.C. 102(b) (Ex. 1003); U.S. Patent No. 5,731,757 filed on August 19, 1996, issued on March 24, 1998, and titled Portable Tracking Apparatus for Continuous Position Determination of Criminal Offenders and 4

12 Victims ( Layson ), prior art to the 795 patent under at least 35 U.S.C. 102(e) (Ex. 1004); and U.S. Patent No. 5,276,916, filed on October 8, 1991, issued on January 4, 1994, and titled Communication Device Having a Speaker and Microphone ( Pawlish ), prior art to the 795 patent under at least 35 U.S.C. 102(b) (Ex. 1005). Section VII below explains how the above-identified patents create a reasonable likelihood that Petitioners will prevail on at least one of the challenged claims. See 35 U.S.C. 314(a). Indeed, section VII, supported by Declaration of Scott Andrews (Ex. 1009), demonstrates that all of the challenged claims are rendered obvious in view of these prior art references. Petitioners request cancellation of claims 1-33 as unpatentable under 35 U.S.C V. OVERVIEW OF THE 795 PATENT The 795 patent is generally directed to a signaling system for tracking and locating an individual in distress. (See Ex at 1:28-32.) The patent describes how technology available at the time of its effective filing date did not address the case of an individual who is helpless in an emergency situation where information is required so that the appropriate authorities can respond quickly and efficiently to a distress signal generated by the individual. (Id. at 3:61-67.) Accordingly, the patent describes a personal security and tracking system that comprise[s] an alarm trigger and separate signaling unit, such that the signaling unit will generate an alarm signal in response to activation of the alarm trigger to enable a locating system to identify the location of the signaling unit, which should remain with the individual. (Id. at 4:1-5

13 10.) As shown in this petition, however, such a security and tracking system was already in the prior art. Figure 1 of the 795 patent illustrates the disclosed system: (Id. at Fig. 1.) In this figure, an individual 50 wears both a portable signaling unit 20 and a remote alarm switch 40. (Id. at 5:65-6:1, 8:3-8.) The individual may use the remote alarm switch 40 to issue an emergency alert by manually activating the switch. (Id. at 4:10-16.) The remote alarm switch may also automatically trigger alerts when certain conditions are met, for example, if the portable signaling unit 20 was involuntarily removed from the individual. (Id.; see also id. at 8:67-9:4.) The remote alarm switch 40 includes an encoding radio transmitter that communicates with a radio receiver of the portable signaling unit 20. (Id. at 9:15-19, 11:58-61.) If the remote alarm switch 40 is activated, the portable signaling unit transmits data including alarm activation parameters, the identity of the individual, and the location of the individual to a central dispatch station 80 via a cellular network 70. (Id. at 8:9-6

14 49.) Based on the received information, the central dispatch station 80 sends assistance to the location specified by the portable signaling unit 20. (Id. at 6:27-33.) To further facilitate assistance to the user, the portable signaling unit 20 can both send and receive data and voice communications to and from the dispatch operator, and is capable of two-way voice communication. (Id. at 5:12-20, 6:9-11, 7:5-8, 8:3-32.) The patent also explains that the disclosed signaling system is not limited to the security and tracking of a person. The invention is capable of protecting the security of animals and inanimate objects. The invention can pinpoint and monitor the location of anything.... (Id. at 7:24-27.) VI. CONSTRUCTION OF THE CHALLENGED CLAIMS (37 C.F.R (b)(3)) The terms in claims 1-33 are given their broadest reasonable interpretation ( BRI ), as understood by one of ordinary skill in the art and consistent with the patent disclosure. See 37 C.F.R (b); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, (Fed. Cir. 2004). This is not the same interpretation that applies to claims in district court proceedings. See SAP Am., Inc. v. Versata Dev. Grp., Inc., No. CBM , Paper No. 70 at 7 (PTAB June 11, 2013) (explaining that the BRI standard is different than the district court standard). Consequently, claim constructions that the Panel may adopt in this proceeding, and positions Petitioners may take with respect to those constructions, are not relevant or binding upon Petitioners in pending or subsequent litigations related to the 795 patent. Petitioners expressly reserve the right to advance different constructions in the related district court cases in accordance with the legal standard applicable in those proceedings. Further, because 35 U.S.C. 112 issues 7

15 cannot be raised in this petition (see 35 U.S.C. 311(b)), Petitioners do not raise such issues here, but reserve the right to do so in the related district court proceedings as the challenged claims may indeed be invalid for failure to comply with one or more requirements of 35 U.S.C In In re Certain Wireless Devices, Including Mobile Phones and Tablets II, Inv. No TA-905, Order No. 14 (ITC June 2, 2014) (Ex at 25-57, 64-70), the ITC administrative law judge construed certain claim terms of the 795 patent as indicated in the chart below. These constructions are adopted for the purposes of this petition, and are consistent with the broadest reasonable interpretation of these terms. Claim Term second receiver second receiver adapted to receive a third signal second receiver adapted to receive a nearby signal security code standby mode leave[s] the standby mode ITC Constructions a radio receiver different from the first receiver a second receiver designed to receive a third signal a second receiver designed to receive a nearby signal, where nearby is read in the context of the device in proximity to the cellular device limitation construction a code that allows an authorized person to access the device a mode where only essential circuits are powered on, the essential circuits being only those circuits necessary to sense the conditions for leaving the standby mode power[s] on the non-essential circuits, the essential circuits being only those circuits necessary to sense the conditions for leaving the standby mode 8

16 Claim Term device in proximity to the cellular device 1 data ITC Constructions a device within a preset location range of the cellular device consistent with each device being worn or carried by an individual information other than voice VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE. A. The Portable Signaling Unit for Tracking Individuals or Objects Described and Claimed in the 795 Patent Was Well-Known. The portable signaling unit of the 795 patent is comprised of well-known, conventional electronic components such as a speaker, microphone, cellular transmitter, cellular receiver, radio receiver, global positioning system ( GPS ) receiver, microcontroller, and re-chargeable battery. (Ex at 11:58-12:55; Fig. 6.) The 795 patent describes how this collection of well-known components is assembled to operate in conventional ways to track persons and objects. (See Ex at ) Such a portable signaling unit was known before the effective filing date of the 795 patent and described in other patents. B. U.S. Patent No. 5,497,149 ( Fast ) Fast discloses [a] system for determining the position of an object to be protected using a portable security beacon. (Ex at Abstract, 1:7-8, 2:52-54, Fig. 1.) Like in the 795 patent, the security beacon is a battery powered device that 1 For the purposes of this petition, the claim term device in proximity to the portable signaling unit can be construed the same as device in proximity to the cellular device. 9

17 is attached to the person or object to be protected. (Id. at 1:65-67, 2:58-60, Fig. 1.) A manually operable call button may be contained in a separate housing connected to the beacon via a tiny wire and used, for example, to initiate an emergency call. (Id. at 3:4-7, 3:12-16, 13:4-8.) The security beacon communicates with a monitoring terminal via a cellular network. (Id. at 12:63-13:4.) If the wearer perceives danger or requires emergency attention of any kind, a push of the call button activates the beacon which sends information to the monitoring terminal. (Id. at 4:55-57.) The monitoring terminal may then contact emergency services using location information received from the security beacon. (See id. at 3:53-56.) The monitoring terminal may also send messages to the security beacon. (Id. at 3:17-34.) Analogous to the devices claimed in the 795 patent, Fast s security beacon includes a GPS receiver that determines its own location from information it receives from satellites. (Id. at 2:51-52.) The security beacon also includes a cellular telephone designed to transmit and receive data. The GPS receiver and the cellular data transceiver are both controlled by a microprocessor. (Id. at 2:54-55.) The cellular transceiver of the security beacon receives from and transmits to the monitoring terminal signals and data over the cellular network. (Id. at 13:2-4.) The security beacon of Fast also includes an additional receiver and transmitter to communicate with other security beacons. (Id. at 7:50-8:7.) For example, when used to enforce restraining orders, both the person who is to be protected and the person under a restraining order wear a security beacon. (Id.) The encoding signal transmitter in the protected person s security beacon communicates with the additional receiver in the security beacon of the person under the restraining order. 10

18 (Id.) Any time the person under restraining order comes within range of the protective transmitter, the beacon is activated and appropriate action can be taken by the supervising person at the alarm receiving terminal. (Id. at 7:58-61.) Fast further explains that the security beacons may be used to track not just people, but also objects, such as cars, and can respond to signals from radio remote controls. (Id. at 11:52-64.) C. U.S. Patent No. 5,416,730 ( Lookofsky ) Lookofsky is directed to an arm-mounted computer used to track and monitor individuals such as soldiers; like the portable signaling unit in the 795 patent, the armmounted computer is capable of cellular communication and receiving GPS signals. (Ex at 1:46-2:11, 2:64-3:3.) Lookofsky discloses that the arm-mounted computer also includes user interfaces and a charging interface. (See, e.g., id. at Fig. 1.) Lookofsky s disclosed arrangement of these features is identical to that claimed in several dependent claims of the 795 patent. (See infra VII.F.2 at pp , VII.F.4 at pp , VII.F.5 at pp ) D. U.S. Patent No. 5,731,757 ( Layson ) Layson also describes a portable tracking apparatus for tracking a person using both a cellular network and GPS satellites. (See, e.g., Ex at Abstract.) In Layson, if an alarm is triggered, the portable tracking apparatus communicates with a central database system via a cellular communication link. (Id. at 3:9-23.) As with the portable signaling units and cellular devices claimed in the challenged patent, the central database system then establishes two-way voice communications between a user of the portable tracking apparatus and a dispatch operator. (Id. at 8:60-9:10.) 11

19 The two-way voice communications enable the dispatch operator to notify the tracked subject of commands, instructions, violations and warnings through [i]nteractive voice communication with the subject. (Id. at 3:36-38, 8:61-9:2.) E. U.S. Patent No. 5,276,916 ( Pawlish ) Pawlish is directed to a flip-style cellular and/or radio device having, among other components, a speaker, a microphone, and a user interface. (Ex at Abstract, 1:51-55, Fig. 1.) Pawlish discloses that the microphone is on a different housing portion than the user interface. (Id. at Abstract, 1:66-2:3, 2:28-35, 2:40-44.) As explained in more detail below, this is a requirement of claim 32 of the 795 patent. (See infra VII.F.5 at pp ) F. Specific Grounds for the Petition The challenged claims are claims 1-33 of the 795 patent. The prior art discussed herein renders obvious each of the challenged claims. 1. Ground 1: Fast Renders Obvious Claims 1-15, 17-21, 27, and 29 of the 795 Patent. Fast discloses a system[] for locating persons or objects, and its system comprises two major components: a security beacon and a programming/monitoring terminal. (Ex at 1:7-8, 2:47-49, Fig. 1.) Fast s security beacon is analogous to the portable signaling unit of the 795 patent, as it is worn or carried by the person being tracked, is activated by a call button unit, communicates via a cellular network with a monitoring terminal, receives non-cellular signals from another security beacon, and receives GPS data from satellites. (See supra VII.B at pp. 9-11; see also Ex at 32.) 12

20 a. Fast Renders Obvious Claim 1. Fast discloses and/or renders obvious each and every element of claim 1 of the 795 patent. a speaker Fast discloses that a security beacon, which is a portable signaling unit, may be equipped with an audible or inaudible alarm 52. (Ex at 14:13-14 (emphases added); see also id. at Fig. 2.) A skilled artisan would readily recognize that to produce an audible alarm, Fast s security beacon necessarily includes a speaker. (See Ex at 56.) a microphone Fast discloses: A microphone can be installed in the beacon... [to] allow the supervising personnel to listen to what is going on at the beacon wearer s location. (Ex at 11:23-26 (emphasis added); see also id. at 14:18-20, Fig. 2; Ex at 56.) a display Fast s security beacon can be equipped with an LCD screen option for displaying short messages from the terminal. (Ex at 6:44-46 (emphases added); see also id. at 13:40-42, Fig. 2 (message screen 36); Ex at 57.) a microcontroller Fast s security beacon includes a microprocessor. (See, e.g., Ex at Fig. 2, 13:25-32, 13:36-39.) Under the broadest reasonable interpretation of microcontroller, a skilled artisan would have considered the claimed microcontroller and Fast s microprocessor analogous. (See Ex at 58.) Further, Fast discloses 13

21 that the microprocessor stores information in the security beacon s memory, the received signals are fed to [the] microprocessor (Ex at 13:29-40), and the microprocessor performs operations and sends messages (id. at 15:1-4). Thus, if the claimed microcontroller is interpreted to require internal memory, a person of skill in the art would have understood that Fast s microprocessor includes inputs and outputs, and functions together with the memory as the claimed microcontroller. (Ex at 58.) a user interface Fast s security beacon includes a keypad. (Ex at 11:45-47.) A person of skill in the art would recognize the disclosed keypad is a user interface, as it provides the user with a way to enter information into and to interface with the device. (Ex at 59.) The 795 patent also describes a user interface in the form of a keypad for receiving a user s security code. (See Ex at 10:21-24.) a transmitter adapted to transmit a first signal via a cellular network Fast s security beacon includes a cellular transceiver illustrated in Figure 2 as element 38. (Ex at Fig. 2.) The cellular transceiver is both a transmitter for sending and a receiver for receiving signals over the cellular network. (Ex at 60.) Fast discloses that any information to be forwarded by beacon 1 to a terminal 3 is transmitted via cellular transmitter 38. (Ex at 13:44-47 (emphases added); see also id. at Fig. 2.) This information is exchanged between the security beacon and the monitoring terminal via a cellular network. (Id. at 13:2-4.) Thus, in Fast, the security beacon includes a transmitter for sending a first signal to the monitoring terminal via a cellular network. (Ex at 60.) This signal may 14

22 include information such as the security beacon s position and any speed, elevation and direction in which the wearer is moving, which is sent by the security beacon to the monitoring terminal via the cellular network if, for example, the wearer pushes the call button and activates the security beacon. (Id., Ex at 4:55-5:1.) a first receiver adapted to receive a second signal via the cellular network As discussed immediately above, Fast s security beacon includes the cellular transceiver 38 that is both the transmitter and the receiver. Fast discloses that communications between the security beacon and the monitoring terminal are made via the cellular network. (Ex at 13:2-4.) Fast further discloses that the security beacon may receive short messages from the monitoring terminal and display these messages on the LCD screen of the security beacon. (Id. at 6:44-55.) Thus, Fast discloses that the security beacon includes a receiver to receive a second signal from the monitoring terminal via the cellular network. a second receiver adapted to receive a third signal other than the first signal and the second signal, wherein the third signal is other than a cellular network transmission For the purposes of this petition, the BRI of second receiver is radio receiver different from the first receiver, and the BRI of second receiver adapted to receive a third signal is a second receiver designed to receive a third signal. (See supra at p. 8.) Fast discloses the claimed second receiver because Fast s security beacon includes an additional receiver designed to receive a third signal from the 15

23 encoding signal transmitter of another security beacon. 2 (Ex at 7:50-61.) The signal from the protective transmitter is separate from the signals the security beacon sends to and receives from the monitoring terminal. (See id.; Ex at 61.) Fast s additional receiver must be tuned to... the signal generated by the protective transmitter and the security beacon must come[] within range of the protective transmitter. (Ex at 7:56-59 (emphases added).) The tuned to and the within range language necessarily refers to electromagnetic frequency transmissions. (Ex at 61.) Although Fast does not specifically disclose the frequency of these transmissions, it would have been obvious to one skilled in the art that the only practical electromagnetic frequency transmissions used by the security beacons are radio frequencies, and the additional receiver of these radio frequency transmissions is a radio receiver. (Id.) Further, the disclosure in Fast makes clear that the frequency transmissions that the additional receiver is tuned to are not cellular transmissions, as Fast discloses two ways of communication between the two security beacons (Ex at 7:50-53): 1) via what one skilled in the art would necessarily understand as electromagnetic frequency transmissions (id. at 7:54-61), and 2) via phon[ing] 2 Fast, like the 795 patent, describes a single system for tracking that can be attached to individuals and used in variety of ways, e.g., to track a missing person or to enforce restraining orders. These different uses are not mutually exclusive, but rather form a system capable of performing any or all of the described uses. Therefore, one of skill in the art would naturally look to all of these disclosures as part of Fast s tracking system. (Ex at 60 n.2.) 16

24 each other (id. at 7:62-8:7). And, in any event, for one of skill in the art, using radio frequency communications between two security beacons within range of each other would have been a practical use of radio frequency technology. (Ex at 61.) In addition, Fast discloses another second receiver and third signal. Fast s security beacon receives signals from the call button unit, and includes a call button port monitor/breaker for receiving such third signals, which are not cellular signals and are different from the signals transmitted between the security beacon and the monitoring terminal via the cellular network. (Ex at 3:4-7, 14:9-12, Fig. 2.) Although Fast discloses that the call button unit is connected to the security beacon via a wire (id. at 3:12-13), one skilled in the art would understand that various methods of connection between the call button unit and the security beacon can be used, including wireless radio connection. (See id. at 2:58-3:4 (acknowledging that various housing configurations are possible for the security beacon); Ex at 62.) This is further confirmed by Fast s disclosure that the security beacon can be used with a remote control when tracking a car, which can transmit a radio signal, an acoustical signal, or an optical signal. (Ex at 8:15-20.) Modifying the call button unit to communicate with the security beacon via radio signals would have been nothing more than [c]ombining two embodiments disclosed adjacent to each other in a prior art patent, which does not require a leap of inventiveness. Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Thus, it would have been obvious to one skilled in the art in light of the general technology in the field and this specific disclosure to modify the call button unit so that it communicates with the security beacon by a radio signal, not via the wire, and to modify the call button port 17

25 monitor/breaker in the security beacon to be a radio receiver. (Ex at 62.) Such modification would also make the security beacon more convenient to wear, as the security beacon can be worn on different parts of a human body (Ex at 2:66-3:4) and a wireless call button unit is more convenient than having to wear a wire around one s body (see Ex at 62). Petitioners will refer to this obvious, trivial modification of the call button unit as the modified call button unit throughout this petition. the transmitter is adapted to receive signals representing data and a voice of a user, and the transmitter is adapted to transmit signals representing the data and the user s voice 3 3 To the extent the Patent Owner may argue that this limitation includes a typographical error and the first instance of the transmitter should be the receiver, Fast discloses such a limitation as described immediately below. In addition, as described in section VII.F.3, Fast renders obvious such an interpretation of this claim limitation in light of the disclosures in Layson. (See, e.g., Ex at 3:36-44 ( [W]ireless transceiver 40 provides two-way data and voice communications between the portable tracking device 12 and the central database system performed by wireless communications. ).) Petitioners do not agree that the Patent Owner is entitled to correct this substantive error in claim 1, or in any other claim, of the 795 patent. See Toyota Motor Corp. v. Am. Vehicle Scis., No. IPR , Paper No. 14 at 13 (PTAB Jan. 13, 2014) ( not[ing] that minor errors of an applicant in connection with an issued patent... are correctible by a certificate of correction. 35 U.S.C Therefore, we have no reason to rewrite [a claim limitation] under 18

26 As described above, Fast s security beacon includes the cellular transceiver 38. (Ex at Fig. 2). As also described above, Fast discloses that the terminal can send data (e.g., short messages) to the security beacon and the security beacon can transmit location information to the monitoring terminal. (Id. at 3:53-56, 6:44-55, 13:2-4.) In addition to exchanging this data, the security beacon can access a voice grade cellular channel. (Id. at 14:23-26 (emphasis added).) The security beacon could contain a voice synthesizer to communicate all required information verbally rather than in data form. (Id. at 14:31-33.) A microphone can be installed in the beacon. It could be activated from the monitoring terminal, using the multi-digit security code, and thus allow the supervising personnel to listen to what is going on at the beacon wearer s location. (Id. at 11:23-26.) The security beacon also includes a cellular telephone, which necessarily transmits and receives voice information. (Id. at 2:51-54.) Indeed, the security beacon may establish a connection by telephone with other supervising personnel or a 911 emergency station. (Id. at 13:17-20.) The communications between the security beacon and the monitoring terminal are made via cellular transceiver 38. wherein the portable signaling unit is adapted to receive a security code via the user interface the context of interpretation. ); see also Kamada, Ltd. v. Grifols Therapeutics Inc., No. IPR , Paper No. 8 at 9 (PTAB Dec. 18, 2014) ( In this inter partes review proceeding, we are not inclined to correct alleged substantive errors in the claims.... Accordingly, we interpret [the challenged claims] as they appear in the [challenged] patent. ). 19

27 The BRI of security code is a code that allows an authorized person to access the device. (See supra at p 8.) Fast discloses that its system uses a multi-digit security code. (Ex at 4:38-43 (emphasis added).) A keypad to program the security beacon could be built in to any of the beacons so that they would not need to be connected to a terminal for programming. (Id. at 11:45-47 (emphasis added).) One skilled in the art would know that to program the multi-digit security code, the multi-digit security code must necessarily be entered using the keypad (i.e., the claimed user interface), be received by the security beacon, and stored in the security beacon. (See id. at 4:37-38; Ex at 64.) Fast discloses that the security code is used to allow the authorized personnel to access the device. (Ex at 6:63-7:2 (The terminal operator can poll a security beacon for its location by typing, on the terminal, the beacon s call number followed by the current multi digit security code and a position request command. ); see also id. at 4:37-40 ( Once such a string of programs is loaded into the beacon, a multi-digit security code is loaded. This code will ensure that only the supervising person can access the beacon remotely. ).) wherein the display is adapted to display a message received by the portable signaling unit via the first receiver As described above, the cellular transceiver 38 of the security beacon in Fast receives messages from the terminal via the cellular network. (Id. at 6:44-55, 13:2-4.) The LCD screen of the security beacon displays short messages from the terminal received by the cellular transceiver 38. (Id. at 6:44-46 (emphasis added); see also id. at 13:39-42, Fig. 2 (message screen 36).) 20

28 b. Fast Renders Obvious Claim 2. Claim 2 depends from claim 1 (see supra VIIF.1.a at pp (describing how Fast renders obvious claim 1)), and further requires that the third signal is a radio signal. (Ex ) It would have been obvious to one skilled in the art that the signals exchanged between the security beacons are radio signals. (See supra at pp ; Ex at 61.) And, as described above, it would have also been obvious to one skilled in the art to modify the call button unit so that it communicates with the security beacon not via the wire but by a radio signal, and to modify the call button port monitor/breaker in the security beacon to be a radio receiver. (See supra at pp ; Ex at 62.) c. Fast Renders Obvious Claim 3. Claim 3 depends from claim 1 (see supra VII.F.1.a at pp ), and further requires that the third signal includes encoded data from a transmitting device. (Ex ) Fast discloses that the additional receiver receives signals from the encoding signal transmitter and the receiver is enabled to decode the received signal. (See Ex at 7:54-57 (emphases added).) Thus, that received signal (i.e., the third signal) includes encoded data. (See Ex at 67.) In addition, one skilled in the art would know that radio frequency signals include encoded data so that the receiving device can correctly detect the intended signal and ignore unintended radio frequency signals. (Id.) Thus, not only are the signals between two security beacons encoded, but the signal from the modified call button unit that transmits radio signals would also include encoded data. (Id.) 21

29 d. Fast Renders Obvious Claim 4. Claim 4 depends from claim 3 (see supra VII.F.1.c at p. 21), with the portable signaling unit of claim 4 further comprising a decoder adapted to decode the encoded data from the third signal. (Ex ) As described above, Fast s additional receiver receives the third signal and is enabled to decode the signal generated by the protective transmitter. (See Ex at 7:56-57 (emphasis added).) And the modified call button radio receiver would necessarily include a decoder adapted to decode the encoded data from the modified call button signal. (See Ex at 68.) e. Fast Renders Obvious Claims 5, 6, and 9. Claim 5 depends from claim 4 (see supra VII.F.1.d at pp ), and claim 6 depends from claim 3 (see supra VII.F.1.c at p. 21). Both claims 5 and 6 include an identical limitation the transmitter transmits a signal in response to the encoded data. (Ex ) In Fast, in response to the security beacon s decoding receiver receiving the encoded signal from the protective transmitter, the beacon is activated and it transmit[s] the determined position to [the] terminal. (See Ex at 7:50-61, 13:12-15.) The security beacon s transmitter thus transmits a signal to the terminal in response to receiving the encoded data from the protective transmitter. (Ex at 69.) In addition, a push of the call button activates the beacon which sends information to the monitoring terminal. (Ex at 4:56-57 (emphasis added).) Receipt of the encoded data from the modified call button unit thus would result in the transmitter sending a signal to the terminal. (Ex at 69.) 22

30 Claim 9 depends from claim 1 (see supra VII.F.1.a at pp ), and further requires that the the third signal includes data and the transmitter transmits a signal in response to the data. (Ex ) The BRI of data is information other than voice. (See supra at p. 9.) For the same reasons as claims 5 and 6, claim 9 is also rendered obvious by Fast because the encoded signal received by the decoding receiver from the protective transmitter necessarily includes data (e.g., encoded information), as it does not include any voice. (Ex at 67.) In addition, the security beacon transmits signals in response to the user pressing the call button. A single push of the button may send a general emergency signal, while pushing the button more than once in sequence could be linked to a medical emergency. (Ex at 5:53-57.) The signal from the call button unit to the security beacon includes data, but not voice. (See id.; Ex at 67.) In response to receiving the signal from the modified call button unit, the cellular transceiver (i.e., the claimed transmitter) of the security beacon transmits cellular signals to the monitoring terminal. (Ex at 4:55-57.) f. Fast Renders Obvious Claim 7. Claim 7 depends from claim 6 (see supra VII.F.1.e at pp ), and further requires that the encoded data represents the actuation of a further user interface on the transmitting device. (Ex ) As described above, it would have been obvious to one skilled in the art that the signal from the modified call button unit can include encoded data and that the modified call button unit can communicate with the security beacon via radio signals instead of wired signals. (See supra at pp , 21.) As required by claim 7, this encoded data represents the actuation (i.e., pressing) of 23

31 the button on the modified call button unit (i.e., the claimed transmitting device), which is a further user interface on the transmitting device (in addition to the keypad of the security beacon). (See Ex at 3:4-7, 4:55-57, 5:53-59; Ex at 71.) g. Fast Renders Obvious Claim 8. Claim 8 depends from claim 3 (see supra VII.F.1.c at p. 21), and includes additional claim limitations that are also disclosed and/or rendered obvious by Fast. a decoder adapted to decode the encoded data from the third signal, wherein the transmitter is adapted to transmit a signal via the cellular network in response to decoding of the encoded data from the third signal As explained above, Fast s security beacon includes a decoder adapted to decode the encoded data from the third signal (see supra at pp ), and a transmitter (i.e., cellular transceiver 38) adapted to transmit a signal via a cellular network in response to the encoded data (see supra at pp ). Because the encoded data from the protective transmitter or the modified call button unit must necessarily be decoded before the security beacon can process that data and determine whether it must be activated, the security beacon s transmitter transmits a signal via a cellular network in response to the decoding of the encoded data from the third signal. (Ex at 7:50-61; see also Ex at 73.) a circuit adapted to store a unit identifier Fast recognizes that one of the most important functions of the security beacon is to send out a message identifying itself. (See Ex at 1:65-2:2 (emphasis added).) Fast discloses that once the security beacon is activated, it transmits the position information along with identification of the object or 24

32 person to which the beacon is attached. (See id. at 7:50-61, 14:56-15:20 (emphasis added).) The personal data of the wearer are stored in the beacon memory. (See id. at 4:3-4.) Similarly, the circuit storing a unit identifier in the 795 patent is also a memory circuit. (See Ex at 9:63-10:1, Fig. 5 (circuit 104); see also Ex at 74.). Because the personal data of the wearer is necessarily unique for each wearer, this data serves as the claimed unit identifier that is stored in the security beacon s memory, which is a circuit. (See Ex at 4:3-4; Ex at 74.) Fast also discloses that each security beacon has an assigned, unique call number that an operator at the monitoring terminal can use to contact the desired security beacon. (See Ex at 6:46-48, 6:67-7:2.) A person of skill in the art would understand that this unique call number can also serve as a unit identifier for the security beacon and that the security beacon necessarily includes a circuit adapted to store this unit identifier. (Ex at 74.) The presence of a storage circuit in the security beacon is also supported by the fact that Fast expressly discloses that personal information may be transmitted to the monitoring terminal if these data are stored in the beacon. (See Ex at 12:16-21 (emphasis added); see also Ex at 74.) wherein the transmitter is adapted to establish a connection with the cellular network to transmit location data representing the location of the portable signaling unit and the identifier Fast discloses that its transmitter establishes a connection with the cellular network and then transmits data representing location and the unit identifier. (Ex at 75.) Fast states that [c]ommunication between beacon 1 and a terminal 3 is wireless via cellular network or similar communication means. (Ex at 13:2-4 25

33 (emphasis added).) And the security beacon can transmit the position information along with identification of the object or person to which the beacon is attached to the terminal. (Id. at 15:18-20 (emphases added).) It would also have been obvious to one skilled in the art to transmit the security beacon s call number to the monitoring terminal as the security beacon s unit identifier once the security beacon is activated, as Fast discloses that one of the most important functions of the security beacon is to send out a message identifying itself, and the security beacon s call number uniquely identifies the security beacon. (See id. at 1:65-2:2 (emphasis added); Ex at 75.) wherein the portable signaling unit has a standby mode to conserve power; wherein the portable signaling unit is adapted to leave the standby mode in response to a signal received by the first receiver, and adapted to leave the standby mode in response to a signal received by the second receiver Fast discloses these standby limitations. The BRI of standby mode is a mode where only essential circuits are powered on, the essential circuits being only those circuits necessary to sense the conditions for leaving the standby mode. (See supra at p. 8.) In Fast, the security beacon can be in an emergency activated mode, a non-emergency activated mode, or a deactivated mode. (See Ex at 4:55-5:1, 6:1-11, 6:40-42, 6:64-7:3, 13:12-15, 14:41-46, 15:21-27; Ex at 76.) The security beacon only transmit[s] the determined position to the monitoring terminal continuously if activated, but engages in no such transmissions in its deactivated state. (Ex at 13:13-15; see also id. at 6:64-7:3, Fig. 3.) Fast further explains the importance of conserv[ing] battery power in case emergency mode operation is required. (Id. at 10:30-34; Ex at 80.) One skilled in the art would understand 26

34 from Fast s disclosure that in the deactivated mode, only those circuits that are necessary to sense the conditions for switching into an activated mode (such as a call button actuation, receipt of a signal from the protective transmitter, or receipt of a command from the terminal polling its location) are powered to conserve power. (Ex at 76.) Fast s deactivated mode is thus a standby mode. (Id.) Fast also discloses that the security beacon leaves the deactivated mode (i.e., the claimed standby mode) in response to a signal received by the first receiver (i.e., a cellular signal from the terminal). (Id. at 77) The BRI of leave the standby mode is power[s] on the non-essential circuits, the essential circuits being only those circuits necessary to sense the conditions for leaving the standby mode. (See supra at p. 8.) Fast states that non-emergency activation occurs when the terminal operator initiates communication with the security beacon over a cellular network and provides the correct security code. (Ex at 14:41-46; see also id. at Fig. 3 (steps 114, 116, and 118).) Any time supervising personnel is curious or concerned as to the whereabouts of the wearer, a call can be placed from the terminal to the beacon to poll it for location information.... The beacon will respond by transmitting its current position information to the terminal. (Id. at 6:64-7:3.) Thus, one skilled in the art would have understood that if the security beacon is in the deactivated mode, it must leave that standby mode in order to receive the signal from the monitoring terminal and to transmit its current position information to the monitoring terminal. (Ex at 77.) Fast also discloses the security beacon leaving the standby mode in response to a signal received by either of its second receivers. If the security beacon s decoding 27

35 receiver receives a signal from the protective transmitter, the beacon is activated and appropriate action can be taken by the supervising person at the alarm receiving terminal. (Ex at 7:58-61). In addition, a push of the call button activates the beacon, causing it to send[] information to the monitoring terminal. (Id. at 4:56-57.) In other words, the security beacon leaves the deactivated state and powers the circuits necessary for the operations in the activated states. (Ex at 78.) In sum, Fast discloses: (1) the importance of power conservation in order to allow the security beacon to have enough power should it be activated; and (2) the deactivated state of the security beacon. Thus, it would have been obvious to one skilled in the art that the disclosed deactivated mode is a standby mode. In that standby mode, Fast s security beacon would only have the circuits necessary to switch to an activated mode powered on. The security beacon would then leave the standby mode (and become activated) in response to receiving a request from the terminal polling the security beacon s location, to the user pressing the modified call button, or to receiving a signal from the protective transmitter of another security beacon in proximity. (Ex at 79.) As described above, a person of skill in the art would have readily understood that Fast s deactivated mode is a power-conserving standby mode, as the security beacon awaits activation. (Id.) But at a minimum, Fast s activated and deactivated modes would have made it obvious for a skilled artisan to place the security beacon in a standby mode when deactivated in order to conserve power. (Id. at 80.) Standby modes were well known to one skilled in the art at the earliest possible effective filing date of the 795 patent and were used to conserve battery power. (See id. at 81.) For 28

36 example, U.S. Patent No. 6,121,922 ( Mohan or Ex ), which is 102(e) prior art to the 795 patent, discusses how a communications module of a tracking system uses a standby mode, and how that communications module leaves that standby mode in response to receiving various signals. (Ex at 4:43-52 ( The system remains in the STANDBY state until a remotely-generated locate-request signal is received,... or if a distress signal is initiated.... ); see id. at Abstract ( The controller... disable[s] the global positioning satellite receiver and communications transceiver when not in use so as to conserve power. The geographic position information may be communicated to a remote location either in response to a carrier activating a panic function or after receiving a request from a remote location which commences the transmission in response to the request. ).) 4 and wherein the portable signaling unit is adapted to receive a GPS signal, wherein the GPS signal is other than the third signal 4 Claim 8 is obvious in view of Fast alone. Claim 8 is also obvious over Fast in view of Mohan s disclosures of the standby limitations. This combination of Fast and Mohan would apply to other claims with similar limitations (claims 17-19, 23-26, and 30-33), as discussed below. A person of skill in the art would have been motivated to combine Fast and Mohan, as both references are directed to small cellular and GPSenabled devices for tracking people. See In re Johnston, 435 F.3d 1381, 1386 (Fed. Cir. 2006) (finding that there was motivation to combine two references because [t]hese teachings are in the same field of endeavor and deal with related subject matter ). 29

37 Fast discloses: The security beacon, the beacon, contains a Global Positioning System (GPS) receiver. This receiver determines its location from information it receives from satellites. (Ex at 2:49-51; see also id. at Fig. 2.) The GPS signal received is different from the third signal disclosed in Fast, as Fast s third signal is from the protective transmitter or the modified call button unit (see supra at pp ), but the GPS signal is received from the satellites. h. Fast Renders Obvious Claim 10. Claim 10 depends from claim 1 (see supra VII.F.1.a at pp ), with the portable signaling unit of claim 10 further compris[ing] circuitry that determines if the third signal is being received by the second receiver. (Ex ) Fast s security beacon necessarily contains circuitry that determines if the third signal (i.e., the signal from the protective transmitter or the signal from the modified call button unit) is being received by the second receiver (i.e., the decoding receiver or the modified call button port monitor/breaker), as the security beacon performs operations in response to receipt of such signals, for example by contacting the monitoring terminal. (Ex at 4:56-57, 7:50-57, 13:12-15; see also Ex at 84.) Moreover, Fast discloses that the circuitry in the microprocessor determines if the claimed third signal is being received, as any signal from the call button unit is monitored by the security beacon microprocessor. (Ex at 10:4-5, 13:43-45 ( Call button unit 30 communicates with microprocessor 24. ); see also id. at 10:40-43 ( Call button activation of a security beacon will have highest priority and must override any other microprocessor activity, such as position checking or message receiving, in the beacon. ), 14:9-12 ( Micro-processor 24 also senses any interruption 30

38 or change of conductivity between call button unit 30 and beacon 1 through call button port monitor 59. ).) It would have been obvious to one of skill in the art to also have the modified call button unit, which communications wirelessly via radio signal, be monitored by the microcontroller in the security beacon. (Ex at 85.) i. Fast Renders Obvious Claim 11. Claim 11 depends from claim 1 (see supra VII.F.1.a at pp ), with the portable signaling unit of claim 11 further comprising circuitry adapted to determine if a transmitting device transmitting the third signal is within a predetermined range of the portable signaling unit. (Ex ) As explained above, the security beacon s decoding receiver receives a signal from a transmitting device (e.g., the protective transmitter), and responds to that signal by contacting the monitoring terminal. (See supra at pp ) The security beacon activation causes the monitoring terminal to take appropriate action if the person under restraining order comes within range of the protective transmitter. (Ex at 7:58-59 (emphasis added).) One skilled in the art would understand that this disclosed range is necessarily predetermined. (Ex at 86.) Thus, Fast s security beacon, and the decoding receiver in particular, necessarily contains circuitry that determines if the transmitting device (e.g., the second security beacon with the protective transmitter transmitting the third signal) is within a predetermined range of the security beacon. (Id.) j. Fast Renders Obvious Claim 12. Claim 12 depends from claim 1 (see supra VII.F.1.a at pp ), and has the additional requirement that the second receiver is adapted to receive a periodic signal from a transmitting device transmitting the third signal. (Ex ) Fast discloses: 31

39 Both the threatened person and the threatening person are required to wear a beacon of the present invention.... Each beacon would be programmed to phone the other beacon at alternating intervals and request its position. (Ex at 7:62-67 (emphasis added).) It would have been obvious to one skilled in the art that the two security beacons could connect to each other at alternating intervals even when they communicate via radio signals. (See id. at 7:54-61; Ex at 87.) In fact, the security beacons must exchange periodic signals in order to determine whether they are within the predetermined range of each other. (Ex at 87.) k. Fast Renders Obvious Claims Claims are all related to circuitry in the portable signaling unit for storing and dialing telephone numbers. Claim 13 depends from claim 1 (see supra VII.F.1.a at pp ), with the portable signaling unit of claim 13 further comprising circuitry adapted to store a telephone number. (Ex ) In Fast, the microprocessor of the security beacon, once activated, dials the number stored in memory 28 of the security beacon. (Ex at 14:62-63, Fig. 2.) Claim 14, which depends from claim 13, additionally requires that the portable signaling unit further compris[es] circuitry that dials the telephone number in response to an event. (Ex ) In Fast, the security beacon can place phone calls in response to a command from the monitoring terminal instructing the security beacon to terminate its cellular connection with the terminal and place another call to an alternate number such as 911. (Ex at 3:49-53; see also id. at 10:47-49 ( If a beacon is activated to emergency mode it will immediately attempt to establish a communication channel to the monitoring terminal. ), 14:58-65 ( Activation starts 32

40 with initiating a communication link 120, unless a communication channel has already been established from terminal Microprocessor 24 dials the number stored in memory 28 as the primary number 121, then checks whether a connection is made 122 and selects an alternate communication path if needed 124. ); Ex at 89.) Claim 15 depends from claim 1, requiring the portable signaling unit to further compris[e] circuitry adapted to dial a telephone number using the transmitter in response to data received from a third signal. (Ex ) As described above, in response to receiving a signal (i.e., a third signal) from the modified call button unit or the protective transmitter, the security beacon is activated and its [m]icroprocessor 24 dials the number stored in memory 28 as the primary number 121. (Ex at 14:56-65.) Thus, Fast s security beacon necessarily includes the claimed circuitry to do so. (Ex at 90.) l. Fast Renders Obvious Claims Claim 17 depends from claim 1 (see supra VII.F.1.a at pp ) with the additional requirement that the portable signaling unit have a standby mode to conserve power. (Ex ) Claim 18 adds to claim 17 the requirement that the portable signaling unit leaves the standby mode in response to a signal received by the first receiver. (Id.) And claim 19 adds to claim 18 the requirement that the portable signaling unit leaves the standby mode in response to a signal received by the second receiver. (Id.) These claim limitations appear in claim 8 and, as discussed 33

41 above, are rendered obvious by the disclosure in Fast. 5 (See supra at pp ; see also Ex at 76-81, ) m. Fast Renders Obvious Claims 20 and 29. Claim 20 depends from claim 1 (see supra VII.F.1.a at pp ), claim 29 depends from claim 27 (see infra VII.F.1.o at pp ), and both claims require that the display be adapted to display a visual message received by the [portable signaling unit]/[cellular device] via the first receiver. (Ex ) As described above, in Fast, the LCD screen of the security beacon displays short messages from the terminal received via the cellular transceiver 38 (i.e., the first receiver). (Ex at 6:44-46; see supra at p. 20; see also Ex at 57, 94.) n. Fast Renders Obvious Claim 21. Claim 21 depends from claim 1 (see supra VII.F.1.a at pp ), and further requires that the third signal is from a device in proximity to the portable signaling unit. (Ex ) The BRI of device in proximity to the portable signaling unit is a device within a preset location range of the portable signaling unit consistent with each device being worn or carried by an individual. (See supra at p. 9.) As described above, when used for enforcing restraining orders, the security beacon receives the third signal from another security beacon that comes within a preset range. (Ex at 7:55-61 (The beacon is activated if the security beacon comes within range of the protective transmitter. ); see also Ex at 95.) 5 As with claim 8, claims are also rendered obvious by Fast in view of Mohan, for the same reasons discussed above. (See supra at pp ) 34

42 o. Fast Renders Obvious Claim 27. Claim 27 is an independent claim, which claims a cellular device for communicating voice and data over a cellular network. (Ex ) As explained above, Fast discloses a security beacon that communicates voice and data over the cellular network. (See supra at pp ) Fast also discloses all limitations of this claim. a transmitter and a first receiver adapted to transmit cellular signals via the cellular network As described above, in Fast, the security beacon includes the cellular transceiver 38 that transmits signals to the terminal via the cellular network and receives signals from the terminal via the cellular network. (See supra at pp ) a second receiver adapted to receive a nearby signal from a device in proximity to the cellular device, the nearby signal including first data and wherein the nearby signal is other than cellular signals The BRI of data is information other than voice. (See supra at p. 9.) As discussed above, Fast s security beacon also includes the additional receiver that receives signals transmitted by transmitters in other security beacons that are in proximity to the receiving security beacon. (See supra at p. 34.) These signals are not cellular signals, they do not include voice, and thus necessarily include data (i.e., the claimed first data). (See supra at pp ) a user interface adapted to receive a security code As described above, in Fast, the security beacon includes a keypad used to enter a security code. (See supra at pp ) 35

43 wherein the transmitter is adapted to transmit second data in response to the receipt of the first data Fast discloses that [a]t the moment when a beacon is activated it will store, in its memory, the current state of all its parameters such as: latest location, time of latest location, time of activation, activation method, any activation code used, current location, any unsuccessful communication channel attempts, etc. After a communication link to the terminal is established, a sequence of events will automatically be stored in a designated segment of the terminal s memory. (Ex at 10:56-63.) In order for a sequence of events to be stored at the terminal, the security beacon must necessarily transmit the various stored parameters once the cellular communication link with the terminal is established. (Ex at 99.) Fast further discloses that in response to a request from the terminal, the activated security beacon can provide additional information to the monitoring terminal. (Ex at 15:16-17.) And it would have been obvious to one skilled in the art that these activation parameters can be transmitted to the monitoring terminal to provide additional information that can be used to track the wearer of the security beacon and to dispatch the necessary help. (Ex at 99.) These parameters are the claimed second data (with the claimed first data being the data in the third signal in response to which the security beacon is activated). (Ex at ) 2. Ground 2: A Combination of Fast and Lookofsky Renders Obvious Claim 16 of the 795 Patent. Fast and Lookofsky are both prior art to the 795 patent. (See supra at p. 4.) Fast discloses a computing device to be worn on a person, such as on the person s arm. (Ex at Abstract, 11:48-51.) Similarly, Lookofsky discloses an arm- 36

44 mounted computer to be worn by a person. (Ex at Abstract, Fig. 3.) The two disclosed devices have many similarities e.g., both are capable of cellular communication and have GPS and short-range communication (i.e., radio frequency) functionalities. (See, e.g., Ex at 2:49-54, 7:55-57, 8:16-20; Ex at 2:64-3:3.) Thus, both disclose portable signaling units and cellular devices as claimed in the 795 patent. Both references were filed in 1993, 6 and deal with the same portable computer technologies and wearable computing devices. One of ordinary skill dealing with the various issues inherent in the design and functionality of portable and wearable computer devices would have been aware of both Fast and Lookofsky, and would have naturally combined Fast s security beacon with Lookofsky s disclosed device housing configurations, including placement of user and charging interfaces to arrive at the claimed invention. See In re Johnston, 435 F.3d at Indeed, Fast acknowledges that various housing configurations are possible for the security beacon. (See Ex at 2:58-3:4.) Moreover, there would have been a finite number of ways to arrange the user interfaces and the charging interface on the limited surface area Fast s security beacon a small electronic device. See KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ( When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of 6 Fast has an earliest effective filing date of September 2, 1993 (Ex at face page), and Lookofsky was filed on November 19, 1993 (Ex at face page). 37

45 innovation but of ordinary skill and common sense. ). Claim 16 depends from claim 1. As described above, Fast renders obvious claim 1. (See supra VII.F.1.a at pp ) A combination of Fast and Lookofsky renders obvious the additional limitations of claim 16. a second user interface comprising at least one button and wherein the second user interface is separate from the first user interface Fast discloses a first user interface a keypad adapted to receive a security code. (See supra at pp. 14, ) Fast s security beacon does not include a second user interface. However, Lookofsky s wearable tracking device does. As shown in the figure below, the device in Lookofsky has two user interfaces, both of which are on its display module 60: an auxiliary numeric keyboard 63 and two add-on switches 84, 85. (Ex at 4:56-57, 6:8-9.) (Id. at Fig. 1 (annotated).) The add-on switches are separate user interfaces from the keyboard. Unlike the keys on the keyboard, they are placed in indentations... so as to reduce the likelihood that the keys are accidentally activated or deactivated if the device is bumped. (Id. at 6:11-14; see also Ex at 104.) This is because the add- 38

46 on switches serve a different function than the keyboard s high use keys (Ex at 5:67-6:2), as the add-on switches are the power on/off and the slee[p]/reset switch[es] (id. at 6:8-9). It would have been obvious to one skilled in the art to include a power on/off switch on the security beacon of Fast to provide the wearer with the ability to turn the security beacon OFF when the wearer takes it off, and ON when the wearer puts the security beacon back on. (Ex at 104.) Not only would it have been obvious to one skilled in the art to include the power on/off button on Fast s security beacon in light of Lookofsky, but power on/off buttons on portable electronic devices were well-known to one skilled in the art at the time of the invention and would have been a trivial design choice. (Id.); see KSR, 550 U.S. at 421. a charging interface adapted to interface with a charging device In Fast, the security beacon includes a charging interface for charging the security beacon. The battery charging port on the personal security beacon is accessible even while the beacon is locked on to the user, and the charging port 46 allows charging of batteries 40 and 42. (Ex at 10:13-14 (emphases added), 13:51-52 (emphasis added); see also id. at Fig. 2 (labeling charging port 46 as a Battery Charging Interface, and showing the security beacon interfaced with Battery Charger 48, i.e., a charging device).) a housing comprising a first surface and a second surface different from the first surface In Fast, [a]ll of [the security beacon s] electronics are contained in a single compact enclosure, with [v]arious housing configurations that permit the security beacon to be worn in a number of ways. (Id. at 2:58-3:4 (emphases added).) Fast s single compact enclosure is a housing, and regardless of its configuration, that 39

47 housing necessarily has a first surface and a second surface different from the first surface since it is a three-dimensional device. (See, e.g., id. at Fig. 1.) Fast also notes that [t]here are three interconnect ports on the beacon; a battery charging terminal, a call button interface, and a programmer interface. Only the battery charging port is accessible while the beacon is locked onto the wearer or object. (Id. at 3:8-11.) If there are three interconnect ports, and only one is accessible while the security beacon is worn (i.e., the battery charging port), the security beacon necessarily has more than one distinct surface. (Ex at 106.) wherein the first user interface and the second user interface are positioned on the first surface, and the charging interface is positioned on the second surface Lookofsky also includes a charging interface. In Lookofsky, [power] module 90 contains any of a variety of batteries The power supply can be directly connected to a car or standard AC outlet via a power transformer for recharging.... The power module 90 includes circuitry for power management and re-charging. (Ex at 6:24-34 (emphases added).) Power module 90 thus has a charging interface for interfacing with a charging device (i.e., a power transformer for connection to a car or outlet). (Ex at 105.) Lookofsky explicitly discloses that both of its user interfaces are on the display module 60 (i.e., the first surface), and its charging interface is on the power module 90 (i.e., the second surface), as illustrated in the annotated Figure 1 of Lookofsky: 40

48 (Ex at Fig. 1 (annotated); see also id. at Fig. 6.) It would have been obvious to one skilled in the art to arrange various interfaces and power charging ports on the security beacon of Fast in a variety of ways including in the way disclosed in Lookofsky, where the two user interfaces are on one surface of the device and the charging interface is on another surface of the device. (Ex at ) Fast explcitly discloses that various configurations of the security beacon are possible. (Ex at 2:58-3:4.) Such an arrangement is just a mere configuraton of the well-known components, that can be configured in a finite number of ways, and does not require any technological advancements. (Ex at ); see KSR, 550 U.S. at Ground 3: A Combination of Fast and Layson Renders Obvious Claims and 28 of the 795 Patent. Layson, like Fast, is also prior art to the 795 patent. (See supra at pp. 4-5.) Both Fast and Layson disclose portable tracking devices. (See Ex at 1:36-40 ( The system of the present invention provides a method of protecting individuals by allowing them to wear a device that locates its own position independent of a 41

49 monitoring terminal and will transmit that information to the monitoring terminal when activated. ); Ex at Abstract ( A portable locator or tracking apparatus is provided for continuous location determination of subjects which communicates with a body-worn, non-removable, tamper resistant transceiver and central data-base system. ).) In addition to both devices being designed to track individuals, the devices disclosed in Fast and Layson have several common functionalities both are capable of cellular communication with a central station, give a user the ability to press a button to initiate contact with the central station in an emergency, and have GPS functionality. (See, e.g., Ex at 2:49-54, 3:4-7; Ex at 2:59-3:2.) Thus, both references disclose portable signaling units and cellular devices as claimed in the 795 patent. Both references deal with the same field of art portable and wearable computing technologies and devices. See In re Johnston, 435 F.3d at One of ordinary skill dealing with the various issues inherent in the design and functionality of portable and wearable computing devices, and especially those used to track individuals, would have been aware of both Fast and Layson. A skilled artisan would also have naturally combined Fast s security beacon capable of both two-way data communication and at least one-way voice communication from the security beacon to the terminal (Ex at 2:52-54, 14:14-26) with the two-way voice communication capability of the tracking device disclosed in Layson (Ex at 2:18-19, 3:36-44). (See Ex at 121.) Configuring Fast s security beacon to be capable of two-way rather than only voice communication from the security beacon to the terminal would have been obvious to one of skill in the art at the time of the invention, particularly 42

50 since Fast s security beacon contains a cellular telephone (Ex at 2:52-54) as well as a speaker and microphone (id. at 11:23-26, 14:13-14). (Ex at 121.) In addition, such a modification to Fast s security beacon would have been viewed as beneficial to enhance communications between the terminal operator and the wearer of the security beacon. (Id.) A skilled artisan would have recognized that such a modification would merely have been an exercise of combining prior art elements according to a known method, or simply substituting one known element for another (e.g., substituting hardware providing voice communication from the security beacon to the terminal with hardware providing two-way voice communication), to yield and obtain predictable results. (Id.); see KSR, 550 U.S. at 416 ( The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.... [W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result in order to be patentable.). a. A Combination of Fast and Layson Renders Claims 22 and 28 Obvious. Claim 22 depends from claim 1 (see supra VII.F.1.a at pp ), and further requires that the transmitter and the first receiver are adapted to establish two-way voice communications via the cellular network using the first signal and the second signal. (Ex ) Similarly, claim 28 depends from claim 27 (see supra VII.F.1.o at pp ), and contains the additional limitation that the transmitter and the first receiver are adapted to establish two-way voice communications via the cellular network. (Ex ) As explained above, Fast s security beacon uses a cellular 43

51 transceiver as both (1) a transmitter adapted to transmit a first signal via a cellular network, with the first signal being a cellular signal from the security beacon to the terminal; and (2) a first receiver adapted to receive a second signal via the cellular network, with the second signal being a cellular signal received from the terminal by the security beacon. (See supra at pp ) Fast s security beacon communicates voice communications from the security beacon to the terminal (i.e., using the first signal) either via a voice synthesizer or a microphone. (Ex at 14:14-20; see id. at 14:23-26 ( A beacon 1 equipped with a microphone 56, or voice synthesizer will require access to a voice grade cellular channel instead of a data-only channel. ); see also id. at 11:12-40.) Fast, however, only explicitly discloses voice communication from the security beacon to the terminal. Layson discloses two-way voice communications: wireless transceiver 40 provides two-way data and voice communications between the portable tracking device 12 and the central data-base system performed by wireless communications. (Ex at 3:36-44 (emphases added); see id. at 2:18-19 ( A speaker and microphone provide tone and interactive voice communications with the subject. ) (emphasis added); see also id. at 8:66-9:3.) These two-way voice communications occur over a cellular network, i.e., wireless network cell site 26. (See id. at 2:65-3:2.) It would have been obvious to one skilled in the art to modify the security beacon in Fast so that the wearer of the security beacon could communicate with the operator at the monitoring terminal via two-way voice communications. (Ex at 113, 121.) This would have been a trivial modification of the security beacon, as Fast s security beacon includes a cellular phone, is equipped with a speaker 44

52 and a microphone, provides two-way data communications between the security beacon and monitoring terminal via the cellular network, provides voice communications from the security beacon to the monitoring terminal via the cellular network, and allows the monitoring terminal to send commands to the security beacon via the cellular network. (Ex at 2:52-54, 11:23-26, 13:12-13, 14:13-20, 14:41-46; Ex at 113, 121.) In light of the disclosure in Layson, it would have been obvious to have the commands from the terminal to the security beacon include voice commands provided by the operator of the monitoring terminal. (Ex at 113, 121.) Such modification of Fast s security beacon would have been beneficial to allow the operator at the monitoring terminal to better access the wearer s condition, for example, in a medical emergency, and provide the wearer with advice on how to handle the emergency situation before medical help arrives. (Id. at 113.) b. A Combination of Fast and Layson Renders Claim 23 Obvious. Independent claim 23 requires a cellular device for communicating voice and data over a cellular network. (Ex ) As explained above, Fast s security beacon is a cellular device that communicates voice and data over a cellular network. (See supra at pp ) The combination of Fast and Layson renders obvious claim 23, all of which appear in other claims discussed above. Fast discloses a user interface adapted to receive a security code via the user interface (see supra at pp ); a circuit adapted to store a unit identifier (see supra at pp ); a transmitter and first receiver adapted to transmit cellular signals via the cellular network (see supra at pp ); a second receiver adapted to receive a nearby signal from a device in proximity to the cellular device, with the nearby signal containing first data and being non-cellular 45

53 (see supra at p. 34); a transmitter adapted to transmit second data, as well as location data representing the location of the cellular device and the device s identifier, in response to the receipt of first data (see supra at pp , 36); and a cellular device with standby mode, 7 wherein the device leaves standby mode in response to either a signal received by the first or second receiver (see supra at pp ). And Layson discloses a transmitter and first receiver adapted to establish two-way voice communications by a user via the cellular network. (See supra at pp ) As described above, one skilled in the art would combine Fast and Layson and it would have been obvious to one skilled in the art in light of this combination that the security beacon in Fast can be modified to provide two-way voice communications via a cellular network. (Ex at 116, 121.) c. A Combination of Fast and Layson Renders Claim 24 Obvious. Claim 24 depends from claim 23 (see supra VII.F.3.b at pp ), and requires that the display be adapted to display a visual message received by the cellular device via the first receiver. (Ex ) As discussed above, the display(s) on Fast s security beacon display(s) visual messages to the user received from the terminal via cellular transceiver 38 (i.e., the first receiver). (See supra at p. 20.) 7 The standby limitations of claim 23 and of all of the claims that depend from it (claims 24-26) are also rendered obvious by Fast in view of Mohan, for the same reasons discussed above. (See supra at pp ) 46

54 d. A Combination of Fast and Layson Renders Claim 25 Obvious. Claim 25 also depends from claim 23 (see supra VII.F.3.b at pp ), with the cellular device of claim 25 further comprising a battery and a sensor for determining if the battery is low. (Ex ) Fast s cellular device is batterypowered. (Ex at 2:58-60 ( All of these electronics are contained in a single compact enclosure and battery powered, preferably using rechargeable batteries. ) (emphases added); see also id. at 13:48-52, Fig. 2 (showing both battery 40 and back-up battery 42).) Fast s cellular device also necessarily contains a sensor for determining a low battery state, as security beacon [a]ctivation will also occur any time a low battery charge condition is detected. (Id. at 7:30-31 (emphasis added); see also Ex at 118.) e. A Combination of Fast and Layson Renders Claim 26 Obvious. Claim 26 depends from claim 23 (see supra VII.F.3.b at pp ), and further requires that the second receiver is adapted to receive a periodic signal from the transmitting device transmitting the third signal. (Ex ) As discussed above, Fast discloses that the decoding receiver is adapted to receive a periodic signal from the protective transmitter in another security beacon, which transmits the third signal, and it would have been obvious to one skilled in the art that such periodic signals can be exchanged between the two security beacons via radio frequency signals. (See supra at pp ) 47

55 4. Ground 4: A Combination of Fast, Lookofsky and Layson Renders Obvious Claims 30, 31, and 33 of the 795 Patent. A person of ordinary skill in the art would have been motivated to combine all three references for the same reasons that they would have combined Fast with Lookofsky, and Fast with Layson; those reasons are described above and incorporated herein by reference. (See supra at pp , ) Indeed, all three references are directed to devices in the same field of endeavor portable electronic devices that can be worn by an individual and used for tracking people and objects. See In re Johnston, 435 F.3d at And all three references disclose devices that are capable of cellular communication and have GPS functionality. (See, e.g., Ex at 2:49-54; Ex at 2:64-3:3; Ex at 2:62-3:3.) It would thus have been obvious for one skilled in the art to combine Fast, Lookofsky, and Layson. (Ex at 128.) a. A Combination of Fast, Lookofsky, and Layson Renders Claim 30 Obvious. Claim 30 is an independent claim that claims a cellular device. (Ex ) Fast s security beacon is a cellular device. (See supra at p. 10.) The combination of Fast, Lookofsky, and Layson renders obvious all elements of claim 30, all of which appear in other claims discussed above. Fast discloses a housing comprising a first surface and a second surface (see supra at pp ); a battery and a sensor for determining the battery is low (see supra at p. 47); a speaker (see supra at p. 13); a microphone (see id.); a first user interface adapted to receive a security code (see supra at pp ); a circuit adapted to store a unit identifier (see supra at pp ); a transmitter and a first receiver to transmit cellular signals via the cellular network (see supra at pp ); a second receiver that receives a nearby signal from a device in 48

56 proximity to the cellular device, with the nearby signal including first data and being non-cellular (see supra at p. 34); a display adapted to display a message received by the cellular device via the first receiver (see supra at p. 20); a transmitter adapted to transmit second data after receiving the first data (see supra at pp ); that the cellular device has a standby mode 8 (see supra at pp ); and that the transmitter transmits location data, the unit identifier, and the second data (see supra at pp , 35-36). Lookofsky discloses a housing comprising a first surface and a second surface, with two different user interfaces being on the first surface. (See supra at pp ) And Layson discloses a cellular device with a transmitter that is adapted to establish two-way voice communications over a cellular network. (See supra at pp ) As described above, one skilled in the art would combine Fast, Lookofsky, and Layson and it would have been obvious to one skilled in the art in light of this combination that the security beacon in Fast can be modified to include two different user interfaces on a single surface and be capable of two-way voice communications via a cellular network. (Ex at , 128.) b. A Combination of Fast, Lookofsky, and Layson Renders Claim 31 Obvious. Claim 31 depends from claim 30 (see supra VII.F.4.a at pp ), with the cellular device of claim 31 further comprising a charging interface adapted to interface with a charging device, wherein the charging interface is positioned on the 8 The standby limitations of claim 30 and of all of the claims that depend from it (claims 31-33) are also rendered obvious by Fast in view of Mohan, for the same reasons discussed above. (See supra at pp ) 49

57 second surface. (Ex ) Both Fast and Lookofsky disclose cellular devices with charging interfaces. (See supra at pp ) Fast implicitly shows that the charging interface is on a distinct surface from the user interfaces (see supra at pp ), and Lookofsky explicitly discloses that its charging interface is on a second surface (in contrast to the two user interfaces on a first surface) (see supra at pp ). As described above, one skilled in the art would combine Fast with Lookofsky to include the charging interface on the second surface of the security beacon. (See supra at p. 41; Ex at 126, 128); KSR, 550 U.S. at 421. c. A Combination of Fast, Lookofsky, and Layson Renders Claim 33 Obvious. Claim 33 depends from claim 30 (see supra VII.F.4.a at pp ), with the cellular device of claim 33 adapted to leave the standby mode in response to a signal received by the first receiver, and the cellular device is adapted to leave the standby mode in response to a signal received by the second receiver. (Ex ) As described above, Fast renders these standby limitations obvious. 9 (See supra at pp ); (Ex at 127.) 5. Ground 5: A Combination of Fast, Lookofsky, Layson, and Pawlish Renders Obvious Claim 32 of the 795 Patent. As described above, a skilled artisan would have been motivated to combine Fast, Lookofsky, and Layson. (See supra at p. 48.) A person of skill in the art would 9 As mentioned above, the standby limitations of claim 33 are also rendered obvious by Fast in view of Mohan (see supra at p. 48), for the same reasons discussed in conjunction with claim 8 (see supra at pp ). 50

58 also have been motivated to combine these references with Pawlish, as Pawlish is prior art to the 795 patent, was filed around the same time as the other references, and is also directed to a portable cellular communication device with conventional components. (Ex at 131.) It would have been obvious for one skilled in the art to use the disclosures in Pawlish to modify the location of various components in the housing of Fast s security beacon because, just like the cellular device in Pawlish, Fast s security beacon includes a cellular phone, is capable of cellular communications, and includes a speaker and a microphone for voice communications over a cellular network. (Id. at ); see In re Johnston, 435 F.3d at In addition, there would have been a finite number of ways in which the components of these devices could have been configured, given the limited number of surfaces, limited number of components, and limited overall surface area of a small electronic device like Fast s security beacon. (Id. at 131); see KSR, 550 U.S. at 421. Claim 32 depends from claim 30 (see supra VII.F.4.a at pp ), and further requires that the microphone [be] positioned on the second surface. (Ex ) It would have been obvious to place a microphone on the second surface of the portable devices disclosed in Fast, Lookofsky and Layson, based on Pawlish s disclosures, to arrive at the alleged invention of claim 32 of the 795 patent. (Ex at 131); see KSR, 550 U.S. at 421. Pawlish explicitly discloses a cellular device with its microphone on the second surface. Pawlish s communication device is utilizable with in [sic] different configurations. The device includes a housing having first and second portions. (Ex at 1:66-68 (emphasis added).) The keypad (i.e., the user interface) of the 51

59 device is on the first housing portion. (See id. at Fig. 1 (reproduced in annotated form on the left).) And the microphone is on the second housing portion. (Id. at 2:40-44, Fig. 1.) Fast and Layson both disclose cellular tracking devices with microphones (Ex at 11:23-26, 14:18-20, Fig. 2; Ex at 2:18-19), but neither discloses the placement of those microphones. It would have been obvious in light of Pawlish for one skilled in the art to place the microphone on a surface of Fast s security beacon that is different than the surface that includes the keypad. See KSR, 550 U.S. at 421. Moreover, a person of skill in the art would have been specifically motivated to place the microphone of Fast s security beacon on the same surface as the charging interface. In Fast s beacon, [t]here are three interconnect ports on the beacon; a battery charging terminal, a call button interface, and a programmer interface. Only the battery charging port is accessible while the beacon is locked onto the wearer or object. (Ex at 3:8-11.) It would have been obvious to place the microphone on a surface that is visible while the security beacon is worn, such as the battery charging terminal (i.e., the charging interface) surface, to ensure the microphone is accessible and adequately captures the user s speech and other sounds from the surroundings. (Ex at 130.) And such an arrangement of components would merely have been an obvious design choice, with or without consideration of Pawlish s explicit disclosure, and would have required no technological advancements. (Id.) 52