PTAB
IPR2017-00741
FedEx Corp v. Intellectual Ventures II LLC
1. Case Identification
- Case #: IPR2017-00741
- Patent #: 6,633,900
- Filed: January 24, 2017
- Petitioner(s): FedEx Corp.
- Patent Owner(s): Intellectual Ventures II LLC
- Challenged Claims: 1
2. Patent Overview
- Title: Method and System for Assigning and Communicating Work Orders
- Brief Description: The ’900 patent discloses a method for distributing work order assignment data to a field crew. The system uses an enterprise computing system to assign work and communicate with at least one mobile field unit used by the crew to receive, view, and update the status of assignments.
3. Grounds for Unpatentability
Ground 1: Claim 1 is obvious over Storch in view of Butler under 35 U.S.C. §103.
- Prior Art Relied Upon: Storch (Patent 5,920,846) and Butler (Patent 4,922,516).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Storch and Butler collectively teach every element of the challenged method claim for distributing work order data. Storch, the primary reference, was asserted to disclose a telecommunications dispatch system for processing service requests and assigning them to technicians.
- Storch’s Work Force Administration Control/Dispatch Out (WFA/DO) system functions as the claimed "enterprise computing system," while its Technician Access Unit (TAU) is the "mobile field unit."
- Storch was argued to teach updating a database when an assignment is dispatched (limitation A), notifying the technician by transmitting the service order (limitation B), and updating assignment data based on technician input after a job is completed (limitation H).
- To address the remaining limitations, Petitioner relied on Butler, which discloses a portable, hand-held technician's terminal. Butler was asserted to teach requiring a technician to enter a "log-on and required password" to gain access, thus verifying identity (limitation C).
- Petitioner contended that both references teach notifying the crew of a successful login by granting access to the system and allowing the download of work orders (limitation D).
- Butler was further argued to teach retrieving and presenting a list of assignments by disclosing that its terminal can store a full day's work, which can be viewed as a list of messages and scrolled through by the technician (limitation E). This feature, when combined with Storch, renders it obvious to retrieve detailed assignment data for a selected assignment from a list (limitation F) and display that detailed data (limitation G).
- Motivation to Combine: Petitioner asserted a POSITA would combine Storch and Butler because both references address the same problem of using hand-held mobile devices to assist field technicians in the telecommunications industry. Storch provides a high-level system overview, while Butler provides specific implementation details for the technician's terminal. A POSITA would have been motivated to modify the TAU device in Storch with the more detailed features taught by Butler, such as its improved login security (log-on and password) and its user interface for displaying and scrolling through a list of multiple assignments, to improve the overall functionality and efficiency of Storch’s system.
- Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in combining the references. The combination involved applying a known technique from Butler (e.g., storing multiple assignments and providing a scrollable display) to a known device from Storch (the technician's mobile unit) to achieve the predictable result of providing a technician with a manageable list of all assignments for a particular day.
- Prior Art Mapping: Petitioner argued that Storch and Butler collectively teach every element of the challenged method claim for distributing work order data. Storch, the primary reference, was asserted to disclose a telecommunications dispatch system for processing service requests and assigning them to technicians.
4. Arguments Regarding Discretionary Denial
- Petitioner argued that the ground presented in this petition is not redundant of the ground presented in a concurrently filed petition, IPR2017-00743. Petitioner explained that this petition relies on a different primary prior art reference (Storch) that has a filing date more than a year prior to the primary reference (Jones) in the other petition. This earlier date was argued to make the present ground stronger against any potential attempt by the Patent Owner to swear behind the prior art's effective date.
5. Relief Requested
- Petitioner requests institution of inter partes review and cancellation of claim 1 of the ’900 patent as unpatentable.