FedEx Corporationv.IpVenture, Inc.

Patent Trial and Appeal Board

Nov 20, 2015

12924470 (P.T.A.B. Nov. 20, 2015)

Trials@uspto.gov Paper No. 33
571.272.7822 Entered: November 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FEDEX CORPORATION,
Petitioner,

v.

IPVENTURE, INC.,
Patent Owner.
____________

Case IPR2014-00833
Patent 8,725,165 B2
____________

Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
J. JOHN LEE, Administrative Patent Judges.

LEE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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INTRODUCTION
On May 30, 2014, FedEx Corporation (“FedEx”) filed a Petition
(Paper 2, “Pet.”) requesting inter partes review of claims 1–30 of U.S.
Patent No. 8,725,165 B2 (Ex. 1001, “the ’165 Patent”). Patent Owner
IpVenture, Inc. (“IpVenture”) timely filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). An inter partes review of claims 1–30 was instituted on
December 3, 2014. Paper 14, 24 (“Dec. to Inst.”). After institution,
IpVenture filed a Patent Owner Response (Paper 23, “PO Resp.”), and
FedEx filed a Petitioner’s Reply (Paper 25, “Pet. Reply”). An oral hearing
was held on July 29, 2015. Paper 31 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. As
discussed below, FedEx has shown by a preponderance of the evidence that
claims 1–30 of the ’165 Patent are unpatentable.
A. Related Proceedings
FedEx identifies three matters related to its Petition: (1) an inter
partes reexamination (Reexamination Control No. 95/001,896) of a related
patent, U.S. Patent No. 7,212,829 B1 (“the ’829 Patent”), filed by FedEx on
February 16, 2012; (2) a district court case filed by IpVenture in the
Northern District of California (No. 4:11-cv-05367), in which claims of the
’829 Patent were asserted against FedEx; and (3) a district court case filed
by IpVenture in the Northern District of California (No. 4:14-cv-04894), in
which claims of the ’165 Patent were asserted against FedEx. Paper 32.
B. The ’165 Patent
The ’165 Patent relates to “shipment of objects and, more particularly,
to monitoring objects during shipment.” Ex. 1001, 2:4–5. The Summary of
the Invention states:
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The monitoring can produce notifications to interested parties.
The notifications typically contain status information pertaining
to the articles being shipped. Alternatively, interested parties
can gain access to status information pertaining to the articles
being shipped via a website. According to one embodiment,
the status information includes at least position (location)
information and shipping conditions information.
Id. at 2:50–56. The specification proceeds to discuss a system and method
to implement such monitoring using “wireless tracking devices” that are
“within or affixed to” the articles being shipped. Id. at 2:61–3:28; see also
id. at 3:29–44 (describing a method using a “mobile communication device
in or attached to the article” to obtain location information).
Further, the described system and method may provide notifications
regarding an “environmental violation,” such as when “the temperature of
the article has exceeded a desired limit . . . or that the article has undergone
excessive forces.” Ex. 1001, 7:63–8:3. The specification further discusses
various “shipping conditions” that can be monitored using the tracking
devices, including “one or more of vibration, acceleration, speed, or
direction of travel of, or force or pressure on, the article, . . . temperature,
humidity, pressure, gaseous or liquid states, chemical compositions, wind
speed, color composition, scent, light, sound, smoke, particle or radiation.”
Id. at 5:15–35.
In addition, the specification describes “convert[ing] position
information . . . into map coordinates, street addresses, etc.” Ex. 1001,
13:21–24. Position information may be further resolved “into more
intelligible locations in a community,” such as the identification of a
particular business or a specific floor in a building. Id. at 13:28–48.
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C. Prosecution History of the ’165 Patent
The ’165 Patent issued from U.S. Patent Application No. 12/924,470
(“the ’470 Application”), which was filed on September 27, 2010. The ’470
Application was a continuation of U.S. Patent Application No. 11/732,581
(“the ’581 Application”), which was filed on April 3, 2007. The ’581
Application issued as U.S. Patent No. 7,809,377 B1.
The ’581 Application was, itself, a continuation-in-part of U.S. Patent
Application No. 10/397,637 (“the ’637 Application”), which was filed on
March 26, 2003, and issued as U.S. Patent No. 7,212,829 B1.
Further, the ’637 Application was a continuation-in-part of U.S.
Patent Application No. 09/797,517 (“the ’517 Application”), which was
filed on February 28, 2001. The ’517 Application claimed priority to
Provisional Application No. 60/185,480 (filed February 28, 2000), and
issued as U.S. Patent No. 7,366,522 B2.
D. Challenged Claims
FedEx challenges claims 1–30 of the ’165 Patent, i.e., all of the
claims. Claims 1, 13, 29, and 30 are independent claims. Independent claim
13 is illustrative of the challenged claims and recites:
13. A method for tracking shipment of packages using
wireless tracking devices provided within or affixed to the
respective packages, the method comprising:
accessing status information pertaining to a wireless
tracking device used to track shipment of a package, the
status information including at least position information
and shipping condition information;
transforming the position information into a point of
interest pertaining to the wireless tracking device based
on at least information stored in a database;
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determining if a shipping condition violation has
occurred during shipment of the package based on at
least the shipping condition information and at least one
shipping condition level;
sending an electronic notification regarding the shipping
condition violation to an interested person if it is
determined that the shipping condition violation has
occurred during shipment; and
facilitating network-based access to enable interested
persons to receive at least a portion of the status
information regarding the package, including at least the
point of interest transformed from the position
information.
E. Instituted Grounds of Unpatentability
This inter partes review was instituted on the following alleged
grounds of unpatentability (Dec. to Inst. 24–25):
Claims Prior Art Basis
1–7, 9, 10, 12–15, 17, 29, and 30 Richards
1
§ 102(b)
8 Richards and Joao
2
§ 103(a)
11, 16, and 18–28 Richards and Zhou
3
§ 103(a)

ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Only those terms in controversy

1
U.S. Patent Application Pub. No. 2002/0000916 A1, published Jan. 3, 2002
(Ex. 1007).
2
U.S. Patent No. 7,253,731 B2, filed Jan. 22, 2002 (Ex. 1010).
3
U.S. Patent No. 6,847,892 B2, filed Oct. 29, 2001 (Ex. 1008).
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need to be construed, and only to the extent necessary to resolve the
controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999).
In the Decision on Institution (Dec. to Inst. 6–14), the disputed claim
terms below were construed preliminarily as follows:
Term Claims Preliminary Construction
package 1–30 a physical item that is capable of
being shipped
wireless tracking device 1–28,
30
a device that is capable of
monitoring both position and
shipping conditions, and capable of
wirelessly communicating with
another device
environmental violation 1–12,
14
a state in which a measurement of
the environment of, or surrounding,
a package exceeds a limit
shipping condition violation 13–28,
30
a state in which a measurement of
the conditions of, or surrounding, a
package during shipping exceeds a
limit
point of interest /
enhanced location
1–30 information identifying a location
that is derived from position
information
individual package that is
portable by a person
23 an individual package that is
capable of being moved by a
person

During trial, the parties continued to dispute the constructions of
“wireless tracking device,” “point of interest,” and “individual package that
is portable by a person.” The parties also disputed the constructions of
“transforming” and “business information.” These disputed terms are
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addressed below. For the terms above that are no longer disputed by the
parties, we adopt the same constructions as in the Decision on Institution
because the full record after trial is consistent with our previous analysis,
and neither party identified evidence compelling different constructions. No
other claim terms require express construction to resolve the issues raised in
this inter partes review.
1. wireless tracking device
Independent claims 1, 13, and 30 recite a “wireless tracking device.”
In the Decision on Institution, this term was construed preliminarily as “a
device that is capable of monitoring both position and shipping conditions,
and capable of wirelessly communicating with another device.” Dec. to Inst.
8–9. The parties raise several issues with respect to the construction of
wireless tracking device.
FedEx argues the proper construction is “a device having one or more
sensors for monitoring position (location) information and/or shipping
conditions information and that is capable of wirelessly transmitting related
data.” Pet. 11–12 (emphasis added); Tr. 5:11–9:23; see Pet. Reply 3 n.1. In
other words, a device that can monitor position information, but cannot
monitor shipping condition information, or vice versa, could nonetheless
qualify as a wireless tracking device, according to FedEx.
Independent claims 13 and 30 both include the following limitation
with respect to the recited wireless tracking device: “accessing status
information pertaining to a wireless tracking device used to track shipment
of a package, the status information including at least position information
and shipping condition information.” Thus, these claims expressly recite
that the status information pertaining to the wireless tracking device includes
both position information and shipping condition information.
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Although it acknowledges this language in claims 13 and 30, FedEx
focuses instead on claim 1. Tr. 5:21–7:8. Claim 1 recites: “receive certain
status information from a wireless tracking device . . . the certain status
information being received includes position information pertaining to
position of the wireless tracking device.” According to FedEx, “wireless
tracking device” should be construed to reflect the “broader” scope of claim
1, which does not state expressly that the status information associated with
the device includes shipping condition information. Tr. 6:13–7:8.
FedEx’s arguments are unpersuasive, however, because FedEx fails in
its Petition and Reply to identify any intrinsic evidence indicating that the
term “wireless tracking device” has different meanings in different claims,
i.e., that the term is “broader” (Tr. 7:3–8) in claim 1 compared to claims 13
and 30. A claim term is presumed to carry the same meaning throughout a
patent, unless the intrinsic record clearly indicates the same term nonetheless
has different meanings in different claims. E.g., Aventis Pharms. Inc. v.
Amino Chems. Ltd., 715 F.3d 1363, 1380 (Fed. Cir. 2013). As discussed
above and in the Decision on Institution (Dec. to Inst. 8–9), the language of
independent claims 13 and 30 indicates that the recited wireless tracking
device must be capable of monitoring both position information and
shipping condition information.
4
Thus, the recitation of the same wireless

4
At the oral hearing, FedEx asserted for the first time that the claimed
wireless tracking device does not require monitoring position information or
shipping condition information, so long as such information is ultimately
received. See Tr. 6:1–18. This argument is untimely because it was not
raised in the Petition (nor in the Reply). See 37 C.F.R. §§ 42.22(a)(2),
42.104(b)(3). Indeed, this argument contradicts the Petition, in which FedEx
urged “wireless tracking device” be construed, in relevant part, as “a device
having one or more sensors for monitoring position (location) information
and/or shipping conditions information.” Pet. 11–12 (emphasis added).
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tracking device in claim 1 implicates the same limitations. Moreover, claim
1 also recites: “determine if an environmental violation has occurred based
on the certain status information and at least one environmental level”
(emphasis added).
5
Thus, the language of claim 1 also is consistent with the
conclusion that the status information from the wireless tracking device
includes shipping condition information as well.
The construction proposed by FedEx also includes a limitation
requiring the recited wireless tracking device to have one or more “sensors.”
Pet. 12. As discussed in the Decision on Institution (Dec. to Inst. 9),
however, FedEx relies on mere embodiments to support such a requirement.
See Pet. 12; Ex. 1011 ¶ 25. FedEx did not adduce further supporting
evidence during trial. Thus, we decline to import such a limitation from the
embodiments described in the specification into the claims reciting a
“wireless tracking device.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004).
During trial, IpVenture raised an argument that “wireless tracking
device” must be construed to require that the device be a single physical
unit. Tr. 19:9–21:10; see PO Resp. 8–10 (arguing the asserted Richards
reference does not disclose a “wireless tracking device” because the relevant
structures are two separate physical units). Contrary to IpVenture’s position,
however, nothing in the claim language itself compels a conclusion that the
recited wireless tracking device must be a single physical unit. In addition,
IpVenture was unable to identify any supporting evidence in the

5
As used in the ’165 Patent, an “environmental violation” is a form of
“shipping condition violation.” See Ex. 1001, 18:39–42 (claim 14, reciting
“wherein the shipping condition violation pertains to an environmental
violation”).
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specification for such a limitation. See Tr. 20:20–21:6. Nor did IpVenture
offer supporting expert testimony.
In sum, the broadest reasonable interpretation of “wireless tracking
device,” as recited in the ’165 Patent, is “a device that is capable of
monitoring both position and shipping conditions, and capable of wirelessly
communicating with another device.”
2. point of interest / enhanced location
Claims 1, 13, and 29 recite a “point of interest” that is obtained by
transforming position/location information based on information stored in a
database. Similarly, claim 30 recites an “enhanced location” that is obtained
by converting position information based on information stored in a
database. Id. at 20:41–43. The parties agree that these terms have the same
meaning in the context of the ’165 Patent. See Pet. 16; PO Resp. 21. In the
Decision on Institution, these terms were construed preliminarily as
“information identifying a location that is derived from position
information.” Dec. to Inst. 12–14. IpVenture argues this construction is
erroneous and proposes instead the construction, “information identifying a
location that is derived from position information and that is more
particular than the location’s street address.” PO Resp. 18–22 (emphasis
added).
The parties do not dispute that a point of interest is derived from
position information. The specification describes an embodiment in which
“location management server 908 can interact with the map database 912 to
convert position information provided by the [Global Positioning System
(“GPS”)] information into map coordinates, street addresses, etc.” Ex.
1001, 13:21–24 (emphasis added). Thus, a street address may be
information derived from position information (e.g., GPS coordinates) and
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information from a database to identify a particular location. According to
IpVenture, however, a street address is not a “point of interest.” IpVenture
relies on the following disclosure in the specification:
The community layout server 914 interacts with a community
layout database 916 to resolve locations, such as street
addresses and cross streets, into more intelligible locations in a
community. For example, instead of a street address, the
locations can pertain to points of interest with respect to the
community.
Id. at 13:30–35. Although this disclosure describes obtaining location
information that is “more intelligible” (id.) than a street address, IpVenture
ignores that the specification makes clear this disclosure pertains to only one
embodiment. Id. at 13:28–30 (“In one embodiment, a community can be
associated with a commercial building, a shopping mall, a residential
community and the like.”). Importing such a limitation from an embodiment
into the claims reciting a “point of interest” is improper. See Am. Acad. of
Sci., 367 F.3d at 1369.
Further, the embodiment identified by IpVenture does not indicate
that a street address cannot be a point of interest within the meaning of the
claims. Although “more intelligible locations in a community” may be a
further refinement of street address information, the specification does not
state that the street address (obtained by converting GPS position
information) cannot itself be a point of interest as well—in other words,
refining a point of interest (street address) into a more specific point of
interest (e.g., name of a business). IpVenture points to the statement,
“instead of a street address, the locations can pertain to points of interest
with respect to the community.” Ex. 1001, 13:34–35. This disclosure,
however, appears to be referring to alternatives—i.e., a point of interest
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identified as a street address or, instead, a point of interest identified with
respect to the community (e.g., business name). Thus, we remain
unpersuaded that the specification clearly disclaims street addresses, which
are within the scope of the broadest reasonable interpretation of the claim
term “point of interest.”
Consequently, the broadest reasonable interpretation of “point of
interest,” as recited in the ’165 Patent, is “information identifying a location
that is derived from position information.”
3. portable by a person
6

Dependent claim 23 recites the additional limitation, “wherein the
package is an individual package that is portable by a person” (emphasis
added). In the Decision on Institution, this term was construed preliminarily
as “capable of being moved by a person.” Dec. to Inst. 14. Relying solely
on a definition in a general purpose dictionary, IpVenture contends the
preliminary construction is overly broad, arguing that the proper
construction is “capable of being carried by a person,” and that the term
excludes the use of mechanical assistance. PO Resp. 30–33; Tr. 24:17–25.
Although it contends “it’s pretty inherent to those skilled in the art what
portable means” (Tr. 25:4–5), IpVenture failed to present any evidence that a
skilled artisan would interpret “portable by a person” to exclude all forms of
mechanical assistance—in fact, the only pertinent evidence in the record
indicates otherwise (see Ex. 1011 ¶¶ 35–36 (Declaration of Dr. Jason L.
Hill)). Nor has IpVenture identified any intrinsic evidence supporting such a

6
The Decision on Institution addressed the full phrase “individual package
that is portable by a person,” but interpreted only the “portable by a person”
portion of the phrase. Dec. to Inst. 14. The parties’ dispute about this claim
language also pertains only to “portable by a person.” Thus, only that
portion of the phrase is addressed here.
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limitation. Indeed, the specification does not discuss size limitations or
whether the use of mechanical assistance is precluded.
Based on the full record developed during trial, the broadest
reasonable interpretation of “portable by a person” does not exclude the use
of all forms of mechanical assistance. As explained further below, we
further conclude the broadest reasonable interpretation of “portable by a
person” encompasses objects the size of a crate or refrigerator. Although the
parties dispute whether substantially larger objects requiring tremendous
mechanical assistance to move (e.g., a cargo ship) qualify as being portable
by a person, such determinations are unnecessary for purposes of this
Decision. See Vivid Techs., 200 F.3d at 803.
4. “transforming”
Claim 13 recites “transforming the position information into a point of
interest.” Each of the remaining independent claims recites a similar
limitation. Relying solely on a dictionary definition, IpVenture argues that
“[t]ransformation of position data would necessarily require alteration of the
position data.” PO Resp. 15 (citing Ex. 2003, 2). FedEx contends such a
construction is overly narrow. Pet. Reply 8–9.
At the oral hearing, IpVenture clarified its position on the construction
of “transforming”:
JUDGE LEE: If I take a longitude and latitude that I get from a
GPS device and I look up in a database that that longitude and
latitude corresponds to AMC Movie Theater, have I now
transformed that position information into a point of interest?
MR. THOMAS: Yes, if you record that transformation.
JUDGE LEE: Even though the GPS data was not altered in any
way.
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MR. THOMAS: Well, you’re altering it by – that’s what I'm
saying, you’ve stored it as the replacement or the more
intelligent descriptor.
Tr. 34:1–10. We conclude that associating position information with a
corresponding point of interest using a database is encompassed by the
broadest reasonable interpretation of the transformation limitations of the
challenged claims. The specification also supports such an interpretation.
For example, the specification describes an embodiment in which “location
management server 908 can interact with the map database 912 to convert
position information provided by the GPS information into map coordinates,
street addresses, etc.” Ex. 1001, 13:21–24. The specification does not
support a limitation that the position information itself must be altered. We
determine that “transforming” does not require further express construction
for purposes of this Decision.
5. “business information”
Claims 9 and 29 recite “business information.” IpVenture argues that
the recited business information excludes “cargo information,” or
“information about cargo.” See Tr. 30:23–24; PO Resp. 26. This argument
is not persuasive, however, because IpVenture cites no evidence to support
it. Indeed, the scope of what IpVenture considers to be “cargo information”
is unclear. Although some information that could be characterized as cargo
information may not qualify as business information within the meaning of
the challenged claims, there is no basis on this record to exclude all
information about cargo from the construction of “business information.”
We conclude the term requires no further express construction for purposes
of this Decision.
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B. Alleged Unpatentability Under 35 U.S.C. § 102(b)
FedEx contends claims 1–7, 9, 10, 12–15, 17, 29, and 30 of the ’165
Patent are anticipated by Richards. Pet. 19–51. As explained below, based
on the full record after trial, FedEx has demonstrated by a preponderance of
the evidence that these claims are unpatentable under § 102(b).
1. Independent Claims 1, 13, and 30
Richards relates to “monitoring systems for monitoring the location
and/or status of assets, objects, people and animals.” Ex. 1007 ¶ 3. Such a
system is illustrated in Figure 11, reproduced below:

Id. at Fig. 11. Figure 11 shows an “asset, object, people or animal monitor
1114,” which is associated with a truck carrying cargo 1134. Id. ¶ 128, Fig.
11. Cargo 1134 may be “large items such as a refrigerator or a number of
smaller items on a pallet or in a crate.” Id. ¶ 129. Sensors 1126 are attached
to cargo 1134 to monitor its status (e.g., temperature) and report to monitor
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1114. Id. A “position determining means,” such as a GPS receiver, also
may be included as part of monitor 1114. Id. ¶ 143. Monitor 1114
communicates wirelessly with central station 1112, such as via satellite or
cellular communications. Id. ¶¶ 128, 146.
FedEx contends these aspects of Richards disclose the “wireless
tracking device” limitations of independent claims 1, 13, and 30. Pet. 19–
20, 25–27, 33–35, 37–40. More specifically, FedEx and its declarant,
Dr. Jason L. Hill, assert that monitor 1114 and sensors 1126 of Richards
7

disclose a device that monitors status information, including both position
information and environmental/shipping condition information (e.g.,
temperature), and communicates that information wirelessly to central
station 1112. Id.; Ex. 1011 ¶¶ 44–46.
IpVenture asserts that neither monitor 1114 nor sensors 1126 are
disclosed as capable of monitoring both position information and shipping
condition information. PO Resp. 6–7. According to IpVenture, monitor
1114 is disclosed as being able to monitor position but not shipping
conditions, whereas sensors 1126 are disclosed as being able to monitor
shipping conditions but not position. Id. Based on its view of the proper
construction of the claims, IpVenture contends that monitor 1114 and
sensors 1126 together do not disclose a wireless tracking device because
they are physically separate devices. Id. at 8–10.

7
IpVenture alleges that the Petition does not assert monitor 1114 and
sensors 1126 together disclose a wireless tracking device, but rather asserts
each of them separately and individually. PO Resp. 8–10; Tr. 18:18–22.
Thus, IpVenture urges that such arguments presented in the Reply be
disregarded as untimely. Tr. 18:18–22. We determine that the Petition
explained sufficiently FedEx’s arguments that monitor 1114 and sensors
1126, each individually and both together, disclose a wireless tracking
device. See Pet. 20–21, 25–27, 33–35, 38–40.
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As discussed above, however, the broadest reasonable interpretation
of “wireless tracking device” is not limited to devices where all relevant
components are contained in a single physical unit. As FedEx asserts,
Richards discloses that monitor 1114 works in conjunction with sensors
1126, which are affixed to cargo 1134, to monitor position information and
environmental/shipping conditions information, such as temperature.
Ex. 1007 ¶¶ 128–29, 143, Fig. 11. Richards further discloses that monitor
1114 communicates wirelessly with central station 1112. Id. ¶¶ 128, 146.
As such, FedEx has shown sufficiently that Richards discloses the “wireless
tracking device” limitations of claims 1, 13, and 30.
FedEx also contends Richards discloses the “environmental violation”
and “shipping condition violation” limitations of claims 1, 13, and 30 in its
explanation of the central station’s operation. Pet. 23, 27–28, 35, 42–43;
Ex. 1011 ¶ 52. As noted by FedEx and Dr. Hill, Richards explains that
“central station 1112 can also process the received data and, in particular,
the data relating to the actual conditions or events sensed by the on-board
sensors to . . . detect sensed conditions which exceed or fall outside of
acceptable limits.” Ex. 1007 ¶ 151. These arguments and evidence support
a finding that Richards discloses the “environmental violation” and
“shipping condition violation” limitations of claims 1, 13, and 30.
According to FedEx, Richards also discloses the “electronic
notification” and “network-based access” limitations of claims 1, 13, and 30.
Pet. 23–24, 28–29, 35–37. Dr. Hill provided supporting testimony, citing
the description in Richards of the central station conveying a “warning
message” to an interested person, such as the operator of the truck carrying
the cargo, to advise him/her of potential or upcoming problems with the
cargo. Ex. 1011 ¶ 52 (citing Ex. 1007 ¶ 151). Further, Richards describes
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an “operator interface 1240” that communicates wirelessly with the central
station and the monitor on the cargo to allow an operator to receive, for
example, the cargo’s location data. Ex. 1007 ¶¶ 156–57. Thus, the evidence
of record supports a finding that Richards discloses the “electronic
notification” and “network-based access” limitations of claims 1, 13, and 30.
FedEx further contends Richards discloses the “point of interest” (and
“enhanced location”) limitations of claims 1, 13, and 30. Pet. 25, 27, 35, 44.
Specifically, FedEx and Dr. Hill cite the description in Richards regarding
how location data can be transmitted to an operator by central station 1112
to identify a location “by street location or by city and state.” Id. (citing Ex.
1007 ¶ 157); Ex. 1011 ¶ 53. In addition, Richards explains that the central
station can display current and historical location data as “an overlay on a
computer generated map” to provide users with information relating to route
usage, asset deployment, and other operational parameters. Ex. 1007 ¶ 150.
Dr. Hill testified a person of ordinary skill would understand Richards to
disclose necessarily that such information is derived from GPS data (i.e.,
position data). Ex. 1011 ¶ 53.
IpVenture argues Richards fails to disclose transforming or converting
position information into a point of interest because: (1) Richards does not
disclose “alteration of the position data” (PO Resp. 13–16); and (2) its
disclosure of street addresses is insufficient because street addresses are not
points of interest (id. at 21–22). In addition, IpVenture contends that
Richards fails to disclose that the alleged transformation of position
information is based on information stored in a database, as required by the
claims. Id. at 16–18. On the full record developed during trial, we are
persuaded by FedEx’s arguments and disagree with IpVenture.
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As discussed above, the broadest reasonable interpretation of “point of
interest” does not exclude street addresses, and “transforming” encompasses
associating position information with a corresponding point of interest using
a database. Richards explains that central station 1112 receives position data
from monitor 1114 and provides location information to an operator in the
form of a street location or city and state. Ex. 1007 ¶¶ 150, 157. It also
generates an overlay over a map to display “present and historical location”
information. Id. ¶ 150. Central station 1112 includes controller 1296 and
related memory devices 1294, which are “adapted to manage a large scale
relational data base, thereby supporting a variety of tables that link fields
containing data of interest.” Id. ¶ 153, Fig. 12. Dr. Hill testified that a
person of ordinary skill would have understood that the central station would
“necessarily” use the disclosed database to perform these transformations of
position information into these street locations, city/state information, and
map positions, based on stored data. Ex. 1011 ¶ 53; see Ex. 1023, 92:9–
94:13, 94:22–95:5, 99:18–101:11, 106:14–107:16. This testimony is
unrebutted, and IpVenture presents no contrary evidence. Thus, FedEx has
shown sufficiently that Richards discloses the “point of interest” (and
“enhanced location”) limitations of claims 1, 13, and 30.
FedEx also contends that central station 1112 and database of
Richards discloses the “tracking database” and “tracking computing device”
limitations of claim 1. Pet. 19–24, 40–41 (citing Ex. 1007 ¶¶ 149–51, 153–
54); Ex. 1011 ¶¶ 47–50. The evidence of record supports a finding that
Richards discloses these limitations.
In conclusion, based on the parties’ arguments and the full record after
trial, FedEx has established by a preponderance of the evidence that
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Richards discloses, either explicitly or inherently, each limitation of claims
1, 13, and 30, thereby anticipating those claims.
2. Independent Claim 29 and Dependent Claim 9
Although similar to the other independent claims, claim 29 recites a
“mobile communication device” instead of a “wireless tracking device.” Ex.
1001, 20:16–18. In addition, claim 29 recites “business information
regarding a business associated with the location.” Id. at 20:19–23. FedEx
relies on essentially the same arguments and evidence it presents for claims
1, 13, and 30 to account for the remaining limitations of claim 29. See Pet.
29–33. Claim 9 depends from claim 1 and recites additional limitations
similar to the business information limitations of claim 29.
FedEx contends that the same aspects of Richards that disclose the
wireless tracking device of claims 1, 13, and 30, also disclose the mobile
communication device of claim 29. See Pet. 30–31, 33, 38–41. For
example, as Dr. Hill noted, Richards explains that monitor 1114 may include
a GPS receiver to determine the location of cargo in transit, which the
monitor wirelessly transmits to central station 1112. Ex. 1011 ¶¶ 44–46
(citing Ex. 1007 ¶¶ 128–29, 143–44).
With respect to the “business information” limitations of claims 9 and
29, FedEx relies on the disclosures in Richards regarding customer-specific
information. Pet. 42, 47–48. For example, Richards explains that an
operator can input data into an operator interface that communicates
wirelessly with the monitor, which transmits the data to the central station.
Ex. 1007 ¶ 150. This data can include information relating to the identity
and status of the cargo—such as information about loading and delivery—
which enables the central station to prepare reports “tailored or customized
according to the unique business requirements of a particular customer.” Id.
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¶¶ 152, 154. According to Dr. Hill, “the information relating to cargo 1134
provided by the operator is necessarily business information,” and Richards
discloses that “the operator-entered information relates to a business of a
customer whose cargo is being shipped.” Ex. 1011 ¶ 60.
IpVenture does not dispute that Richards discloses the recited mobile
communication device, but instead argues Richards fails to disclose both the
business information limitations and transforming location information into
a point of interest. PO Resp. 37–38. Regarding the latter, FedEx has shown
sufficiently that Richards discloses transforming location information into a
point of interest, based on information stored in a database, for the same
reasons discussed above with respect to claims 1, 13, and 30. IpVenture
presents the same arguments as it does for claim 1, which are unpersuasive
for the same reasons.
Regarding the business information limitations, IpVenture first
contends that FedEx relies on a disclosure of “cargo information,” not
business information. PO Resp. 26. As discussed above, however, the
broadest reasonable interpretation of “business information” does not
exclude categorically all information relating to cargo. The relevant issue is
whether the identified disclosures of Richards disclose information
regarding a business, not whether that information (also) relates to cargo.
The evidence and unrebutted testimony presented by FedEx support a
finding that Richards discloses the business information limitations of claims
9 and 29. As noted above, Richards discloses that data entered by the
operator may relate to, for example, the status of cargo (i.e., a package) as
well as whether (and when) the cargo was delivered to a business. See Ex.
1007 ¶ 154. Central station 1112 applies this data to generate customized
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reports relating to “the unique business requirements of a particular
customer.” Id. ¶ 152 (emphasis added).
IpVenture also asserts Richards fails to disclose that the business
information is provided to a wireless tracking device (or mobile
communication device) by “a wireless device at the business,” as recited in
claims 9 and 29. PO Resp. 25–26. This argument is not commensurate with
the scope of the claim language, which does not require the business
information itself be sent by a wireless device at the business to the wireless
tracking device or mobile communication device. Rather, claims 9 and 29
recite that the business information is received “based on wireless
communication between the [wireless tracking device/mobile
communication device] and a wireless device at the business.” Richards
discloses that operator interface 1240 (i.e., the wireless device)
communicates wirelessly with monitor 1114 (i.e., the wireless tracking
device). Ex. 1007 ¶ 154. Richards also describes that the operator can enter
data through an optical scanner, for example, to “pinpoint the times at which
the cargo was . . . delivered.” Id. This data is then sent by monitor 1114 to
central station 1112 (id.), which produces the business-related reports
discussed above (id. ¶ 152). Based on the full record, the evidence and
unrebutted testimony support FedEx’s contention that Richards discloses the
business information limitations of claims 9 and 29.
Therefore, FedEx has established by a preponderance of the evidence
that Richards discloses, either explicitly or inherently, each limitation of
claims 9 and 29, thereby anticipating those claims.
3. Dependent Claims 2–7, 10, 12, 14, 15, and 17
FedEx contends Richards further anticipates dependent claims 2–7,
10, 12, 14, 15, and 17, identifying specific portions of the Richards reference
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as allegedly disclosing each additional limitation of these claims. Pet. 44–
51. FedEx further relies on Dr. Hill’s unrebutted testimony, which explains
how Richards discloses the limitations of these claims from the perspective
of a person of ordinary skill in the art. Ex. 1011 ¶¶ 54–59, 61–65.
IpVenture does not argue separately the patentability of these
dependent claims, instead relying on its arguments regarding independent
claims 1 and 13. PO Resp. 22, 29. For the same reasons discussed above as
to independent claims 1 and 13, those arguments are not persuasive.
Based on the parties’ arguments and the full record after trial, FedEx
has established by a preponderance of the evidence that Richards discloses,
either explicitly or inherently, each limitation of claims 2–7, 10, 12, 14, 15,
and 17, thereby anticipating those claims.
C. Alleged Unpatentability Under § 103(a)
FedEx contends claim 8 of the ’165 Patent is unpatentable as obvious
in light of the combined teachings of Richards and Joao. Pet. 51–52. In
addition, FedEx contends claims 11, 16, and 18–28 of the ’165 Patent are
unpatentable as obvious in light of the combined teachings of Richards and
Zhou. Pet. 52–60.
1. Prior Art Status of Joao and Zhou
In the Decision on Institution (Dec. to Inst. 20–22) and our Decision
on Patent Owner’s Request for Rehearing (Paper 24, 2–7), we explained our
preliminary determination, for purposes of deciding whether to institute an
inter partes review, that Joao and Zhou qualify as prior art. As we have
discussed previously, FedEx met its initial burden of production by
identifying certain limitations in the challenged claims that are not recited in
any priority application with a filing date early enough to antedate Joao and
Zhou. Dec. to Inst. 20–21; Paper 24, 3–6. The burden of production then
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shifted to IpVenture to rebut FedEx’s contentions, such as by identifying
written description support for those limitations in earlier priority
applications. Paper 24, 5–6. IpVenture did not meet this burden during trial.
In fact, IpVenture did not present any arguments or evidence regarding this
issue in its Patent Owner Response.
8
PO Resp. 41–42.
Based on the evidence and arguments presented, FedEx has shown
sufficiently that the challenged claims lack adequate written description
support in any priority application filed before March 26, 2003. See Pet. 6–
7. Consequently, on the full record after trial, FedEx has established that
Joao and Zhou qualify as prior art to the ’165 Patent.
2. Claim 8
Claim 8 recites the additional limitation, “wherein if the
environmental violation is determined to have occurred, the electronic
notification indicates that an acceleration or a force induced on the package
has exceeded a predetermined level.” Ex. 1001, 17:56–59. FedEx asserts
that Joao is directed to a shipment tracking system and teaches the detection
and notification of an impact or force of impact by a monitoring device built
into or placed within a shipment. Pet. 51–52; see Ex. 1010, 15:9–17, 19:35–
65. Further, FedEx also cites the Declaration of Dr. Hill, who testified that
one of ordinary skill would have been motivated to combine Joao with
Richards because both are in the same field—systems for tracking
packages—and because Joao indicates monitoring excessive forces would

8
IpVenture referred to its then-pending Request for Rehearing (Paper 19),
which subsequently was denied (Paper 24). We note IpVenture did not
request any postponement of the due date for its Patent Owner Response
until after its Request for Rehearing was decided, nor did IpVenture request
additional briefing after the denial of rehearing to address the issue of
whether Joao and Zhou qualify as prior art.
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provide the benefit of detecting when “a mishandling, a dropping, an
accident, etc.” has occurred. Ex. 1011 ¶¶ 66, 69 (quoting Ex. 1010, 19:56–
60). Dr. Hill concluded that a skilled artisan would have found it obvious to
combine the above teachings of Joao with the teachings of Richards to arrive
at the invention recited in claim 8 of the ’165 Patent. Id. ¶¶ 67–69.
IpVenture did not present any arguments with respect to claim 8
beyond its arguments regarding claim 1, from which claim 8 depends. See
PO Resp. 22, 42. Those arguments, however, are not persuasive for the
same reasons as discussed above for claim 1.
Based on the full record developed at trial, FedEx has demonstrated
by a preponderance of the evidence that the subject matter of claim 8 would
have been obvious over the combination of Richards and Joao.
3. Claims 11, 16, and 18–28
Zhou relates to a system that “collects position and sensor data via one
or more remote localization and sensing devices,” and provides that data to
end users via an “Application Service Provider (‘ASP’).” Ex. 1008, 2:38–
44. Among the applications disclosed in Zhou is monitoring packages being
shipped. Id. at 38:1–8. FedEx pinpoints specific disclosures in Richards and
Zhou that it alleges teaches each limitation of dependent claims 11, 16, and
18–28. Pet. 53–60. Relying on the prior art and the testimony of Dr. Hill,
FedEx further asserts that one of ordinary skill in the art would have been
motivated to modify the cargo monitoring system of Richards to incorporate
certain features of the person/object monitoring system of Zhou. Id. at 54–
55, 58–60; Ex. 1011 ¶¶ 71–76, 83–88. For example, Dr. Hill testified that a
person of ordinary skill would have been motivated by Zhou’s suggested
benefits of its Internet-based access and notification system, whereby users
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can customize environmental thresholds for monitoring specific things or
locations. Ex. 1011 ¶¶ 75–76 (citing Ex. 1008, 15:50–16:12).
IpVenture did not present any arguments with respect to claims 11,
16, 18–22, and 25–28, beyond its arguments regarding claims 1 and 13, from
which these claims depend. See PO Resp. 29, 42. Those arguments are
unpersuasive for the same reasons as discussed above for claim 1. With
respect to claim 23 and its dependent claim 24, IpVenture further contends
that Richards does not teach the “portable by a person” limitation of claim
23. Id. at 29–37. IpVenture’s position, however, relies on its proposed
construction for “portable by a person,” which excludes any form of
mechanical assistance. Id. As discussed above, however, this proposed
construction is overly narrow, and the intrinsic record does not support
reading such a limitation into the term “portable by a person.” FedEx relies
on the disclosure of cargo such as “a refrigerator or a number of smaller
items on a pallet or in a crate” in Richards as teaching an individual package
that is portable by a person. Pet. 57 (quoting Ex. 1007 ¶ 129). Dr. Hill
testified that a person of ordinary skill would have understood a refrigerator
or smaller items to be portable by a person. Ex. 1011 ¶ 80.
Based on the evidence presented, including Dr. Hill’s unrebutted
testimony, we conclude that a refrigerator and a crate, as disclosed in
Richards, qualify as portable by a person within the meaning of claim 23.
Although FedEx also contends that an entire trailer (i.e., structure 1116 in
Richards) also is portable by a person, which IpVenture disputes, we need
not address those teachings for this Decision. Further, the full record after
trial supports sufficiently FedEx’s remaining contentions with respect to its
asserted ground of unpatentability based on Richards and Zhou. Thus,
FedEx has shown by a preponderance of the evidence that the subject matter
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of claims 11, 16, and 18–28 would have been obvious over the combination
of Richards and Joao.

CONCLUSION
For the foregoing reasons, FedEx has shown by a preponderance of
the evidence that claims 1–7, 9, 10, 12–15, 17, 29, and 30 of the ’165 Patent
are unpatentable under 35 U.S.C. § 102(b) as anticipated by Richards; claim
8 is unpatentable under 35 U.S.C. § 103(a) as obvious over Richards and
Joao; and claims 11, 16, and 18–28 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Richards and Zhou.

ORDER
It is
ORDERED that claims 1–7, 9, 10, 12–15, 17, 29, and 30 of the ’165
Patent are held unpatentable under 35 U.S.C. § 102(b);
FURTHER ORDERED that claims 8, 11, 16, and 18–28 of the ’165
Patent are held unpatentable under 35 U.S.C. § 103(a); and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Jeffrey Berkowitz
Michael V. Young, Sr.
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
jeffrey.berkowitz@finnegan.com
michael.young@finnegan.com

PATENT OWNER:
C. Douglass Thomas
Peter P. Tong
IpVENTURE, INC.
doug@ipventure.com
peter@ipventure.com