Unified Patents Inc v. Inventergy LBS LLC

1. Case Identification

• Case #: IPR2019-01112
• Patent #: 9,781,558
• Filed: May 24, 2019
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Inventergy LBS, LLC
• Challenged Claims: 1-9, 17-24, 31-37, and 43-47

2. Patent Overview

• Title: System and Method for Communication with a Tracking Device
• Brief Description: The ’558 patent discloses a tracking device system capable of communicating with a remote server. The device’s functionality is determined by "configuration data" which can be remotely modified to alter operational parameters, such as the power state of the location detector or intervals for reporting diagnostic information.

3. Grounds for Unpatentability

Ground 1: Unpatentability over Derrick and Copley - Claims 1-9, 17-24, 31-37, and 43-47 are anticipated by Derrick or rendered obvious by Derrick in view of Copley.

• Prior Art Relied Upon: Derrick (Patent 7,545,318) and Copley (Patent 7,015,817).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Derrick, which discloses a "remote tracking device" (RTD), anticipates nearly all limitations of the challenged claims. Derrick’s RTD includes a GPS receiver (location detector), a cellular transceiver (communication device), and memory storing location data, an operating program (code), and operating parameters (configuration data). Petitioner asserted that Derrick’s system allows a remote monitoring center to modify these parameters to control the device's functionality, such as the frequency of location sampling, thereby determining the power state of the GPS receiver. Derrick also discloses reporting operational data (e.g., battery status, location, GPS status) to the remote center. For any limitations not expressly disclosed by Derrick, Petitioner contended Copley supplies the teaching. Copley teaches a similar GPS tracking device and discloses sending a "configuration message" from a remote system to alter variables, specifically teaching configuration data that controls GPS power states through "delay" settings and "reporting intervals" to conserve power.
  • Motivation to Combine (for §103 grounds): A Person of Ordinary Skill in the Art (POSA) would have been motivated to combine the teachings of Derrick and Copley to improve the functionality and power management of Derrick's system. Derrick explicitly sought a system for remotely changing the frequency of location determinations to save power. Copley provided known and conventional methods for achieving this exact goal through remotely modifiable configuration variables.
  • Expectation of Success (for §103 grounds): A POSA would have had a reasonable expectation of success in combining the references because it involved applying Copley’s conventional programming and configuration techniques to the substantially similar and existing hardware described in Derrick to achieve the predictable result of improved power management.

Ground 2: Unpatentability over Freathy and Copley - Claims 1-9, 17-24, 31-37, and 43-47 are anticipated by Freathy or rendered obvious by Freathy in view of Copley.

• Prior Art Relied Upon: Freathy (Patent 7,961,092) and Copley (Patent 7,015,817).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Freathy, which discloses a GPS tracking "tag" communicating with a central monitoring station (CMS), anticipates the challenged claims. Freathy’s tag includes a GPS module (location detector), a cellular modem (communication device), and flash memory storing location history and programmed code. The tag’s functionality is determined by remotely modifiable "operating parameters" (configuration data) sent from the CMS. These parameters can switch the device between a "normal power state" and a "reduced power state," thereby determining the power state of the location detector. Freathy also describes reporting operational data (e.g., location, battery status, tamper alerts) to the CMS. As an alternative, Petitioner contended that to the extent Freathy does not explicitly teach storing location data in memory, this feature would have been obvious in view of Copley, which teaches storing location data in memory for backup and historical logging.
  • Motivation to Combine (for §103 grounds): A POSA would have been motivated to combine Freathy and Copley to achieve the benefits of flexibility and power savings that Freathy explicitly sought. Freathy aimed to extend the range and battery life of GPS trackers by minimizing power consumption. Copley taught established methods for power conservation in a similar device, making its teachings directly applicable to improving Freathy’s system.
  • Expectation of Success (for §103 grounds): A POSA would have had a reasonable expectation of success because the combination involved applying Copley's known power-saving configuration methods to the existing hardware in Freathy. This was a conventional task that would yield the predictable result of a more power-efficient tracking device, which was a stated goal of Freathy.

4. Key Claim Construction Positions

• "configuration data": Petitioner proposed this term means "data that at least partially determines the functionality of the device." This construction was argued to be supported by the patent's specification, which states the "functionality of the tracking device depends at least in part on the configuration data" and provides examples like intervals for communication, power states, and monitored geographical conditions.
• "operational data": Petitioner proposed this term means "data that is indicative of the status or operation of the device." This was based on specification examples including battery status, radio signal strength, status of the location detector (e.g., GPS fix state), and violation of a location condition.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was not warranted. It was contended that the primary references, Derrick and Freathy, were materially different from the art considered during prosecution and were never before the Examiner. While Copley was cited during prosecution, its application was limited to disclosing basic memory and responsive data communication, and its more relevant teachings on remotely configurable power-saving modes were not considered.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-9, 17-24, 31-37, and 43-47 of the ’558 patent as unpatentable under 35 U.S.C. §102 and/or §103.