PTAB

IPR2017-00741

FedEx Corporation v. Intellectual Ventures II LLC

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1. Case Identification

2. Patent Overview

  • Title: Method for Distributing Work Order Assignment Data
  • Brief Description: The ’900 patent discloses a system and method for assigning and communicating work orders to field crew personnel. The system uses an enterprise computing system to dispatch assignments to a mobile field unit (e.g., a PDA), allowing field crews to receive, view, and update work order information with minimal dispatcher intervention, purportedly using non-proprietary technology like TCP/IP.

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 claim 1. Storch was presented as the primary reference, disclosing a telecommunications dispatching system that performs most of the claimed steps. Storch’s system features an enterprise-side dispatching system (WFA/DO) that assigns service orders to an outside technician’s mobile “technician access unit” (TAU). Petitioner contended that Storch teaches updating a central database when an assignment is dispatched (Claim 1A), notifying the technician by transmitting the service order (1B), retrieving and displaying detailed assignment data upon request (1F, 1G), and updating the database with completion information provided by the technician (1H).

    • Petitioner argued that Butler, which discloses a portable, hand-held technician's field terminal for the same purpose, supplies the remaining limitations and provides motivation to improve Storch’s system. Specifically, while Storch describes a technician logging in with a simple "employee code," Butler teaches a more secure method of entering a "log-on and required password" to gain access, thus teaching the verification of field crew identity in response to login data (1C). Petitioner asserted that granting system access after this login constitutes notifying the crew of a successful login (1D), or that adding an explicit "Welcome" message would be an obvious modification. Furthermore, while Storch’s system appears to dispatch jobs individually, Butler’s terminal is designed to store and display a list of messages for a full day's work, featuring a scrollable display to view them. This, Petitioner argued, teaches the step of retrieving and presenting a list of assignments (1E).

    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Storch and Butler because both references address the identical problem of using hand-held mobile devices to assist field technicians in the telecommunications industry. They disclose similar system components (a central dispatch system and a mobile technician terminal) communicating over telephone lines. Because Storch describes the system at a high level and Butler provides specific, advantageous implementation details for the mobile terminal (e.g., enhanced security, list-based assignment management), a POSITA would have been motivated to look to Butler to implement or improve upon the mobile TAU device in Storch’s system.

    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The combination involved applying known techniques (Butler's password login and scrollable list display) to a known type of system (Storch's dispatch system) to achieve the predictable result of a more secure and user-friendly field service management tool.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the ground presented in this petition is not redundant of a ground presented in a separate IPR petition (IPR2017-00743) filed the same day against the same patent. Petitioner stated this petition is based on a different primary prior art reference (Storch) which has a significantly earlier filing date than the primary reference in the other petition (Jones). 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. The other petition, based on Jones and Kaman, was noted to more closely track the Patent Owner's infringement contentions in a co-pending district court case.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’900 patent as unpatentable.