PTAB

IPR2017-00729

FedEx Corp v. Intellectual Ventures II LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System and method for managing mobile field assets
  • Brief Description: The ’581 patent describes a system for managing mobile field assets, comprising a remote enterprise computing device (server) and a handheld device with communication and position modules. The system enables field personnel to use the handheld device to access remote programs, collect field and location data, and transmit it to the server for analysis.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rappaport - Claims 1-15, 18, 19, 21, 23, and 24 are obvious over Rappaport.

  • Prior Art Relied Upon: Rappaport (Patent 6,971,063).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rappaport, which discloses a system for designing and testing wireless communication networks, taught all limitations of the challenged claims. Rappaport’s system includes a handheld computer used by a field technician and a remote server. Petitioner contended that Rappaport’s “SitePlanner®” software, which runs on the server to model and analyze network performance, constitutes the claimed “assessment program.” The handheld device accesses this remote program to exchange network models, collects field data (e.g., signal measurements) and location data (via GPS), and communicates this data back to the server, thereby mapping to the limitations of independent claims 1, 7, and 18.
    • Motivation to Combine (for §103 grounds): The argument centered on the obviousness of combining different embodiments and functionalities disclosed within the single Rappaport reference. Petitioner asserted a person of ordinary skill in the art (POSITA) would have understood that the various handheld computers depicted in Rappaport (e.g., in Figures 1, 9, and 10) were aspects of the same system and would have found it obvious to combine their disclosed functionalities into a single, integrated handheld device.
    • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success, as combining these compatible features from a single, coherent system was a predictable design choice.

Ground 2: Obviousness over Rappaport and DeLorme - Claim 16 is obvious over Rappaport in view of DeLorme.

  • Prior Art Relied Upon: Rappaport (Patent 6,971,063), DeLorme (Patent 6,321,158).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 16 adds the limitation of a position module configured to provide "navigable instructions." While Rappaport taught a handheld device with a GPS for determining a technician's location on a campus, DeLorme disclosed a PDA using a GPS receiver to provide turn-by-turn navigation instructions.
    • Motivation to Combine (for §103 grounds): A POSITA would combine DeLorme's well-known navigation functionality with Rappaport's system to improve efficiency. It would have been an obvious enhancement to help technicians navigate complex field environments, such as a large campus with multiple buildings, to find specific service locations.
    • Expectation of Success (for §103 grounds): The combination was argued to be predictable and straightforward, as both references disclosed implementing GPS functionality on common PDA platforms.

Ground 3: Obviousness over Rappaport and Wright - Claims 17 and 22 are obvious over Rappaport in view of Wright.

  • Prior Art Relied Upon: Rappaport (Patent 6,971,063), Wright (Patent 5,857,201).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 17 adds an "inventory program" to access inventory data, and claim 22 adds synchronizing a "service schedule" with that data. Rappaport disclosed generating a "bill of materials" for network components. Wright disclosed a client-server system allowing field users with mobile devices to access an "inventory service" on a server to check the availability of specific products.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Wright's inventory-checking capability with Rappaport’s bill of materials functionality to create a more robust system. This would allow a field technician not only to see what parts are needed for a job (from Rappaport) but also to check their real-time availability (from Wright), enabling better work scheduling and improved control over the maintenance process.
    • Expectation of Success (for §103 grounds): The integration would have been predictable, as both systems were based on the common architecture of a handheld device communicating with a remote server.

Ground 4: Obviousness over Rappaport and Khalessi - Claim 20 is obvious over Rappaport in view of Khalessi.

  • Prior Art Relied Upon: Rappaport (Patent 6,971,063), Khalessi (Patent 6,633,900).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 20 adds "means for enabling updating field operation assignments." Rappaport provided the system for a technician to perform field assessment work. Khalessi disclosed a system for assigning and communicating work orders to geographically dispersed field personnel via their mobile devices.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these systems to improve field personnel management. Integrating Khalessi’s task assignment and updating features into Rappaport's technical assessment environment would allow a manager to assign specific network design or maintenance tasks to technicians and monitor their progress, creating a more comprehensive and efficient workflow.
    • Expectation of Success (for §103 grounds): As both references described systems where mobile units communicate with a central server to manage field personnel, a POSITA would have found it straightforward to combine them.

4. Key Claim Construction Positions

  • Petitioner argued that claims 18-24, which recite "means for" limitations, should be construed under pre-AIA 35 U.S.C. § 112, ¶ 6.
  • Petitioner identified specific corresponding structures from the ’581 patent’s specification for each claimed function. Key proposed structures included the "communication module 42" for functions related to communication, the "position module 46" for location-tracking functions, and the "processor 22 and RAM 26" executing a "field data management program" for data management and analysis functions.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention was that the term "assessment program" should be interpreted broadly. Petitioner argued that Rappaport’s "SitePlanner®" software—a program for designing, modeling, and troubleshooting wireless communication networks—falls squarely within the ’581 patent's own examples of field assessments, such as "equipment/system testing/troubleshooting." This interpretation was foundational to Petitioner's argument that Rappaport taught the core limitations of the independent claims.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’581 patent as unpatentable.