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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
International Business Machines Corporation Petitioner,
v.
EnvisionIT, LLC Patent Owner
Patent No. 9,136,954
Title: BROADCAST ALERTING MESSAGE AGGREGATOR/GATEWAY SYSTEM AND METHOD
Inter Partes Review No. IPR2017-01246
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,136,954
i
TABLE OF CONTENTS
Page
LIST OF EXHIBITS ................................................................................................. V
I. INTRODUCTION ........................................................................................... 1
II. MANDATORY NOTICES ............................................................................. 3
A. Real Parties in Interest (37 C.F.R. § 42.8(b)(1)) ................................... 3
B. Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 5
C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) ........................... 5
D. Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 6
III. CERTIFICATION OF GROUNDS FOR STANDING .................................. 6
IV. FEES ................................................................................................................ 6
V. SUMMARY OF THE ’954 PATENT AND PROSECUTION HISTORY .... 6
A. The Claims of the ’954 Patent ............................................................... 7
B. Specification of the ’954 Patent ............................................................ 9
C. Prosecution History of the ’954 Patent ............................................... 11
VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 12
VII. BACKGROUND ON PUBLIC MESSAGE BROADCASTING ................. 13
A. The Emergency Alert System ............................................................. 14
B. The Push for an Updated and Improved Emergency Broadcasting Warning System .................................................................................. 19
C. Technological Advances in Geographic-Based Messaging ................ 27
VIII. OVERVIEW OF CHALLENGE AND PRECISE RELIEF REQUESTED . 31
IX. CLAIM CONSTRUCTION .......................................................................... 39
ii
X. GROUND 1: CLAIMS 17 AND 23 ARE OBVIOUS OVER FCC 1994, NSTC, AND CAP 0.5 .................................................................................... 40
A. Scope and Content of the Prior Art ..................................................... 40
B. Level of Ordinary Skill in the Art ....................................................... 40
C. Differences Between the Claims and the Prior Art and Conclusion of Obviousness .................................................................................... 40
D. Lack of Secondary Considerations ...................................................... 53
XI. GROUND 2: CLAIMS 17 AND 23 ARE OBVIOUS OVER REIGER AND NSTC ............................................................................................................. 54
A. Scope and Content of the Prior Art ..................................................... 54
B. Level of Ordinary Skill in the Art ....................................................... 54
C. Differences Between the Claims and the Prior Art and Conclusion of Obviousness .................................................................................... 54
XII. CONCLUSION .............................................................................................. 62
CERTIFICATE OF WORD COUNT ...................................................................... 63
iii
TABLE OF AUTHORITIES
Cases
Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008) ........................................................................... 45
AM General LLC v. UUSI, LLC, IPR2016-01049, Paper 14 (P.T.A.B. Nov. 7, 2016) ..........................................4, 6
Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008) ..................................................................... 45, 57
ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214 (Fed. Cir. 2016) ............................................................................ 53
Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131 (2016) ......................................................................................... 39
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) ............................................................................ 45
Western Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361 (Fed. Cir. 2010) ............................................................................ 53
Zoll Lifecor Corp. v. Philips Elects. N. Am. Corp., IPR2013-00606, Paper 13 (P.T.A.B. Mar. 20, 2014) ............................................ 4
Statutes
35 U.S.C. § 102(b) ................................................................................ 33, 34, 37, 38
35 U.S.C. § 314(a) ................................................................................................... 39
35 U.S.C. § 315(b) ..................................................................................................... 6
35 U.S.C. §§ 311–319 ................................................................................................ 1
47 U.S.C. § 303(r) .................................................................................................... 33
Rules
37 C.F.R. § 42 ............................................................................................................ 1
37 C.F.R. § 42.100(b) .............................................................................................. 39
37 C.F.R. § 42.104(a) ................................................................................................. 6
37 C.F.R. § 42.8(b)(1) ................................................................................................ 3
37 C.F.R. § 42.8(b)(2) ................................................................................................ 5
iv
37 C.F.R. § 42.8(b)(3) ................................................................................................ 5
37 C.F.R. § 42.8(b)(4) ................................................................................................ 6
37 C.F.R. §42.24(a)(1) ............................................................................................. 63
47 C.F.R. § 11 .......................................................................................................... 14
47 C.F.R. § 11.31(d) ................................................................................................ 16
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LIST OF EXHIBITS
Exhibit No. Description
Ex. 1001 U.S. Patent No. 9,136,954
Ex. 1002 File History of U.S. Patent No. 9,136,954
Ex. 1003 Declaration of Art Botterell
Ex. 1004 Curriculum Vitae of Art Botterell
Ex. 1005 Declaration of Rajeev Surati, Ph.D.
Ex. 1006 Curriculum Vitae of Rajeev Surati, Ph.D.
Ex. 1007 Common Alert Protocol (v 0.5a) – Alert Message Data Dictionary (draft June 20, 2002) (“CAP 0.5”)
Ex. 1008 Partnership for Public Warning Report: Developing A Unified All-Hazard Public Warning System, dated November 25, 2002 (“PPW Report”)
Ex. 1009 U.S. Patent Application Publication No. 2002/0103892 (“Reiger”)
Ex. 1010 REPORT AND ORDER AND FURTHER NOTICE OF PROPOSED RULE MAKING (FCC Report No. 94-288) (“FCC 1994”)
Ex. 1011 Emergency Alert System, 65 Fed. Reg. 21,657 (April 24, 2000) (to be codified at 47 C.F.R. pt. 11)
Ex. 1012 U.S. Patent No. 5,995,553 (“Crandall”)
Ex. 1013 National Science and Technology Council, Working Group on Natural Disaster Information Systems, Subcommittee on Natural Disaster Reduction, "Effective Disaster Warnings," November 2000 (“NSTC”)
Ex. 1014 Peter L. Ward, Effective Disaster Warning: A National Tragedy, Natural Hazards Observer, July 2001, Vol. XXV, No. 6, pp. 3-4
vi
Ex. 1015 Comments posted on www.incident.com (https://web.archive.org/web/20050308044329/http://www.incident.com/pipermail/cap-interop.mbox/cap-interop.mbox)
Ex. 1016 Guillaume Peersman and Srba Cvetkovic, The Global System for Mobile Communications Short Message Service, IEEE Personal Communications, June 2000,Vol. 7, No. 3, pp. 15-25 (“Peersman”)
Ex. 1017 United States’ Return of Service of Rule 14 Notice to IBM, filed May 6, 2016, CellCast Technologies, LLC, and Envisionit, LLC v. United States, No. 15-cv-01307C
Ex. 1018 United States’ Unopposed Motion to Notice Third Party, filed March 4, 2016, CellCast Technologies, LLC, and Envisionit, LLC v. United States, No. 15-cv-01307C
Ex. 1019 Tomasz Imielinski and Julio C. Navas, GPS-Based Geographic Addressing, Routing, and Resource Discovery, Communications of the ACM, April 1999, Vol. 24, No. 4, pp. 86-92
Ex. 1020 Arianne Aryanpur, AOL to Start Issuing ‘Amber Alerts’ on Web, LA Times, October 1, 2002, http://articles.latimes.com/2002/oct/01/nation/na-amber1
Ex. 1021 Common Alerting Protocol (CAP) Working Documents, http://web.archive.org/web/20020702222623/http://www.incident.com/cap/docs.html
Ex. 1022 Patent Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 9,136,954, filed February 7, 2017, Department of Justice v. EnvisionIT, LLC, Trial No.: IPR2017-00180
Ex. 1023 Extensible Markup Language (XML), W3C Working Draft November 14, 1996, http://www.w3.org/pub/WWW/TR/WD-xml-961114.html
Ex. 1024 Roger L. Freeman, Fundamentals of Telecommunications, Wiley Series in Telecommunications and Signal Processing (John G. Proakis ed., 1999)
Ex. 1025 Gunnar Heine & Holger Sagkob, GPRS Gateway to Third Generation Mobile Networks, Mobile Communications Series (2003)
1
I. INTRODUCTION
International Business Machines Corporation (“IBM” or “Petitioner”)
petitions for inter partes review (“IPR”) under 35 U.S.C. §§ 311–319 and 37
C.F.R. § 42 et seq. of claims 17 and 23 of U.S. Patent No. 9,136,954 (“the ʼ954
patent,” Ex. 1001).
Claims 17 and 23 of the ’954 patent are directed to a method of “collecting
broadcast messages…for broadcasting…within a geographically defined broadcast
target area.” Systems using that method, however, were used and described in the
prior art years before the earliest purported filing date of the ’954 patent. For
example, the federal government required TV, radio, and cable stations to
participate in the Emergency Alert System (“EAS”), which just as the system
recited in the challenged claims, collected messages and transmitted them to
people within a geographically defined area.
Independent claim 17 recites steps necessary to transmit a broadcast
message, including “receiving over an input interface a plurality of broadcast
message requests, each broadcast method request including a broadcast agent
identification… a geographically defined broadcast target area, and a broadcast
message…” and “for each broadcast message request, verifying an authority …
including an authority of the originating broadcast agent to send the broadcast
message to the broadcast target area.” These steps were part of the original EAS
2
and are described in the prior art. Moreover, with the development of new
technologies, the federal government modernized the EAS with updates to the
interface used to receive a broadcast message request, the broadcast message
transmission network, the way geographically defined areas were targeted, and the
way an agent’s authority to send a broadcast message was verified. All of these
changes are recorded in the prior art and were included in all updates of the EAS.
Claim 23, which depends from claim 17, adds a limitation directed to the
type of broadcast message transmission system that provides a broadcast message
to at least a portion of the broadcast target area. Many, if not all, of the specified
transmission systems were used in prior art broadcast systems and are disclosed in
the prior art.
During prosecution of the application that led to the ’954 patent, the Patent
Owner argued that, unlike prior systems, the disclosed system sends messages to
anonymous recipients within a target area without first ascertaining their identities.
However, contrary to Patent Owner’s arguments, some prior systems provided
geographically targeted broadcasting to anonymous people with no pre-message
identification required. For example, the EAS described in Federal
Communications Commission (“FCC”) documents transmitted broadcast messages
through radio stations to all listeners within its transmission range. Other prior-art
systems, including internet-based systems, also provided that functionality.
3
Further, the prior art describes using cellular broadcasts—the same network
exemplified in the ’954 patent—to deliver messages to a geographically defined
audience. None of these prior-art examples required pre-message identification but
rather allowed anonymous people to receive messages. Therefore, as explained
more fully below, claims 17 and 23 are obvious over prior art printed publications
that describe the EAS and other broadcast message systems.
None of the prior art presented in this Petition was before the examiner
during prosecution of the application that led to the ’954 patent. This Petition is
supported by the expert declarations of Mr. Art Botterell and Dr. Rajeev Surati.
II. MANDATORY NOTICES
A. Real Parties in Interest (37 C.F.R. § 42.8(b)(1))
The real party in interest is IBM.
IBM is a third-party defendant in a co-pending patent litigation in the United
States Court of Federal Claims filed by Patent Owner and CellCast Technologies,
LLC against the United States. IBM joined the case after being served with a Rule
14 notice on April 11, 2016. The United States has filed its own petition for inter
partes review of the ’954 patent (IPR2017-00180) in which IBM has no interest,
and the United States is not a real party in interest in this proceeding.
Neither the United States nor its representatives participated in any way in
the preparation of this Petition and its supporting documents. The United States
4
did not fund the preparation of this Petition in any way, directly or indirectly. The
United States had and continues to have no opportunity to control this proceeding.
Therefore, the United States is not a real party in interest in this proceeding. See,
e.g., Zoll Lifecor Corp. v. Philips Elects. N. Am. Corp., IPR2013-00606, Paper 13
at 9, (P.T.A.B. Mar. 20, 2014) (“Factors for determining actual control or the
opportunity to control include existence of a financially controlling interest in the
petitioner…Additional relevant factors include: the non-party’s relationship with
the petitioner; the non-party’s relationship to the petition itself, including the
nature and/or degree of involvement in the filing; and the nature of the entity filing
the petition…The evidence as a whole must show that the non-party possessed
effective control from a practical standpoint.”).
In this case, both IBM and the United States have an interest in the
patentability of the ’954 patent. However, the test for real party in interest is
whether the non-party has control over the IPR. Here, the government does not
have control over the IPR, as explained. Further, any obligation that IBM may
have to indemnify the United States for patent infringement (see Ex. 1018 (Motion
to Notice Third Party) at 3) does not give rise to a privity or other relationship that
would cause the United States to be a real party in interest in the instant
proceeding. See AM General LLC v. UUSI, LLC, IPR2016-01049, Paper 14 at 5-6
(P.T.A.B. Nov. 7, 2016).
5
B. Related Matters (37 C.F.R. § 42.8(b)(2))
The ’954 patent is at issue in CellCast Techs., LLC and EnvisionIt, LLC v.
The United States and IBM, No. 15-1307, pending in the United States Court of
Federal Claims. The following U.S. patents, related to the ’954 patent, are also at
issue in that case: Nos. 8,438,221 (“the ’221 patent”); 7,693,938 (“the ’938
patent”); 8,103,719 (“the ’719 patent”); and 8,438,212 (“the ’212 patent”).
The ’954 patent is at issue in IPR2017-00180. This IPR was filed by the
United States, a third party, and raises unpatentability arguments that are different
than those presented in this petition. The ’221 patent is at issue in IPR2017-00160;
the ’938 patent is at issue in IPR2017-00183; the ’719 patent is at issue in
IPR2017-00186; and the ’212 patent is at issue in IPR2017-00185. Petitioner has
no involvement in any of these IPRs.
Concurrently with this Petition, Petitioner is filing petitions for IPR of the
’221 patent, the ’938 patent, the ’719 patent, and the ’212 patent.
C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
Lead counsel is Mark J. Abate, Reg. No. 32,527. Backup counsel are Calvin
E. Wingfield (to seek pro hac vice admission) and Sarah Fink, Reg. No. 64,886.
Counsel are with Goodwin Procter LLP at 620 Eighth Avenue, New York, NY
10018-1405. Email contact for counsel is [email protected],
6
D. Service Information (37 C.F.R. § 42.8(b)(4))
Please direct all correspondence to counsel at the contact information above.
Petitioner consents to service by electronic mail at [email protected],
[email protected], and [email protected].
III. CERTIFICATION OF GROUNDS FOR STANDING
Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the patent for
which review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this petition. Petitioner was served with a
Notice to IBM to Appear in CellCast Techs., LLC and EnvisionIT, LLC v. The
United States and IBM, No. 15-1307 on April 11, 2016. (Ex. 1017 (United States’
Return of Service of Rule 14 Notice to IBM).) This Notice, however, is not a
“complaint alleging infringement of the patent,” such as is required to trigger the
one year statutory bar under 35 U.S.C. § 315(b). See AM General IPR2016-01049,
Paper 14 at 3-9.
IV. FEES
The Commissioner is hereby authorized to charge all fees due in connection
with this matter to Attorney Deposit Account 506989.
V. SUMMARY OF THE ’954 PATENT AND PROSECUTION HISTORY
The ’954 patent (Ex. 1001) issued on September 15, 2015, from Application
Ser. No. 13/887,940 (“the ’940 application”), which was filed on May 6, 2013.
7
The ’940 application is a continuation of application No. 13/411,448 which claims
priority to Provisional Application No. 60/544,739 (“the ’739 application”), filed
on February 14, 2004. For purposes of this proceeding only, Petitioner assumes
that the ’954 patent is entitled to this claim of priority.
A. The Claims of the ’954 Patent
The ’954 patent has 23 claims. Only claims 17 and 23 are challenged in this
Petition. Claim 17 may be divided into five elements as follows:
Element Claim Language
Element 1 –
Preamble:
A method of collecting broadcast messages
from a plurality of broadcast message
originators and providing a broadcast
message to two or more of a plurality of
broadcast message transmission systems for
broadcasting to a plurality of user devices
located within a geographically defined
broadcast target area, the method
comprising:
Element 2 –
Receiving
Element
receiving over an input interface a plurality
of broadcast message requests, each
broadcast message request including a
broadcast agent identification uniquely
identifying the broadcast agent originating
the broadcast message request, a
geographically defined broadcast target area,
8
and a broadcast message from one of a
plurality of coupled broadcast agent message
origination systems;
Element 3 –
Storing Element
storing a geographically defined broadcast
message jurisdiction authority for each
broadcast message originator;
Element 4 –
Verifying
Element
for each broadcast message request,
verifying an authority of the broadcast agent
identification including an authority of the
originating broadcast agent to send the
broadcast message to the broadcast target
area, the verifying ensuring the stored
broadcast message jurisdiction of the
originating broadcast originator includes the
broadcast target area of the broadcast
message request, the verifying resulting in a
verified broadcast message request; and
Element 5 –
Transmitting
Element
for each verified broadcast message request,
determining two or more broadcast
transmission systems providing broadcast
messaging service to at least a portion of the
broadcast target area and transmitting the
broadcast message of each verified broadcast
message request over an output interface to
the determined two or more broadcast
message transmission systems.
9
Claim 23 depends from claim 17 and further specifies that the
broadcast message transmission systems are at least two from a list that
includes a wireless mobile carrier network, an internet provider, a CATV
network, a radio system, and a television system.
B. Specification of the ’954 Patent
The specification discloses “message broadcast systems and in particular
location-specific message broadcasting aggregator and gateways.” (Ex. 1001 (’954
patent) at 1:22-24.) The Background section discusses prior-art public warning
systems and other broadcast messaging systems, and explains that existing public
warning systems had various limitations. (Id. at 1:28-2:2.) Specifically, the
specification criticizes “SMS” or “short message service,” which sent text
messages to individual cell phones, because of its inability to send many messages
simultaneously due to network congestion. (Id. at 1:53-2:2.) Further, SMS
messaging “is not location based and does not send messages to intended recipients
located within a defined geographic location.” (Id. at 3:62-67.) The specification
says that some phones include “cell broadcasting” capabilities, but services have
“not been developed which effectively utilize the technology.” (Id. at 4:1-10.)
The specification describes a “public service message location broadcasting
system” or “PLBS.” (Id., passim.) The PLBS “receives emergency or public
service messaging and identification of the target broadcast area from public
10
service or government entities” and broadcasts that message to “all compatible
telecommunication receiving devices in, or entering, an [sic] predefined at-risk
geographic location or area.” (Id. at 5:52-65.) Messages could include, for
example, missing child alerts, severe weather warnings, and flood warnings. (Id. at
6:1-6.) The patent states that the PLBS is “[u]nlike other emergency messaging
services that require the recipient’s identity, a predetermined fixed delivery
location, and usually the payment of a service fee,” in that it reaches an “unlimited
number of people in real time, with no pre-event subscriber action required.” (Id.
at 6:7-12.) PLBS achieves this by using “cell-broadcast SMS (C-BSMS)
technology to provide a message or alert to a single cell geographic location, a
neighborhood, a city, or an entire nation with minimal impact to the hosting
telecommunication networks.” (Id. at 6:13-17.)
The PLBS includes functions and steps to verify that a Broadcast Agent (i.e.,
someone sending a message over the system) is “authorized to send the requested
broadcast messages to the defined broadcast target area…prior to transmittal.” (Id.
at 6:26-33.) This verification may be accomplished by, for example, pre-defining
the area that a particular Broadcast Agent has “authority to cover,” locking that
area/agent profile in a “Footprint Library,” and checking the profile against a
message which includes information on the Broadcast Agent, the text of the
message, and a geographically defined target area. (Id. at 8:45-60; 14:51-55.)
11
The PLBS provides an interface to the Broadcast Agent to ensure “simple
and timely definition of the broadcast target area, the message and the
authentication of the Broadcast Agent.” (Id. at 6:33-42.) For example, a Broadcast
Agent may define a target area for a broadcast by “drawing shapes or indicating
the areas on a map.” (Id. at 16:49-52.) The PLBS also stores past messages and
may retrieve those for retransmission or for “offline statistics and account
administration.” (Id. at 9:50-52; 12:20-25.)
C. Prosecution History of the ’954 Patent
During prosecution, the ’940 application was subjected to one examiner
rejection due to obviousness over a combination of references that disclose
broadcast messaging systems. (Prosecution History of the ’954 patent (Ex. 1002)
at 704 of 878.) The Patent Owner argued that the claims were different from the
obviousness references cited by the examiner by arguing that, inter alia, the cited
references (1) used SMS broadcasting; (2) broadcasted only a signal, and not a
message; (3) did not teach a verification step; and (4) required ascertaining the
identity of people who will receive the message before broadcasting—all
properties specifically excluded from the then-pending claims, according to Patent
Owner.
The Patent Owner explained that the verification process “includes a
comparison of a stored geographically defined broadcast message jurisdiction for
12
the broadcast agent that originated the message against the target area for the
particular message.” (Id. at 785 of 796.) Further, “each agent is preauthorized for
sending messages only to his/her geographic area.” (Id.) According to the Patent
Owner, “[n]one of the references or the combination of [the cited prior art] disclose
storing of a geographically defined broadcast message jurisdiction for an agent and
then comparing the such stored agent jurisdiction to the target area of each
message to ensure that that [sic] each message is being originated by an agent
whom [sic] has authority to transmit and broadcast a message to the intended target
area for the message.” (Id. at 786 of 796.)
VI. LEVEL OF ORDINARY SKILL IN THE ART
The ’954 patent is directed to a system of and method for location-based
broadcasting. Accordingly, a person of ordinary skill in the art (“POSA”) to whom
the ’954 patent is directed would have the following qualifications: Either a
bachelor’s degree in computer science, engineering, or a related field with some
practical experience designing, developing, or maintaining broadcast messaging
systems such as emergency alerting systems; or significant practical experience
designing, developing, or maintaining broadcast messaging systems, such as
emergency alerting systems. This person would have access to and/or collaborate,
as needed, with individuals in other areas, such as computer or software
13
programming, cellular network technology, and public alert or warning systems.
(Ex. 1005 (Surati Dec.) at ¶ 26; Ex. 1003 (Botterell Dec.) at ¶ 25.)
VII. BACKGROUND ON PUBLIC MESSAGE BROADCASTING
Delivering various types of messages to the public is an important function
of government and business. Types of messages may include warnings and
instructions regarding danger or things to avoid, for example, warnings of flood or
approaching treacherous weather conditions, instructions to remain inside due to
poor air quality, and suggestions to commute by mass transit or to use an alternate
route due to bad traffic conditions. Messages may also be business or leisure
related, such as advertisements for businesses and announcements of a county fair.
Simple message systems include a siren that announces an approaching tornado, a
traffic report on a local radio station, or an advertisement on an electronic
billboard.
The types of messages mentioned above concern a population within a
specific geographic area: the area that will be affected by the flood, the area with
the poor air quality, the area surrounding the heavy traffic conditions, the area
whose population may patronize a particular store, and the area surrounding a
county fair. Many of these messages are also time-sensitive. Because of this,
public broadcast messaging systems aim to disseminate messages to particular
areas and during particular timeframes.
14
Broadcast messaging systems have developed to take advantage of
technology to allow for greater detail in messages, more precise geographic
targeting, and speed. (Ex. 1006 (Surati Dec.) at ¶ 33.) For example, the United
States first implemented an Emergency Broadcast System (“EBS”) in 1963, which
included a two-tone alerting signal to be broadcast over radio stations. (FCC 1994
(Ex. 10101) at ¶ 4.) The original EBS using radio only was limited because it did
not include text in the broadcast message. (Id.) The EBS evolved, and by 1994, it
was an analog transmission system that allowed the broadcasting of a tone and a
text-based message, and included many types of broadcasters such as radio
stations, television stations, cable stations, and news company wire services. (Id.
at ¶¶ 7, 8.)
A. The Emergency Alert System
In 1994 the FCC retired the EBS and created the EAS, as described in FCC
1994. (Ex. 1010 (FCC 1994) at ¶ 30.) The protocols and requirements of EAS are
codified in 47 C.F.R. § 11, the first version of which is included in FCC 1994. (Id.
at 77 of 119.) Some reasons given by the FCC for the switch from the EBS to the
EAS were that the EBS was dependent upon human operators and therefore subject
to operator error (id. at ¶ 13) and that the analog equipment used by EBS was
1 REPORT AND ORDER AND FURTHER NOTICE OF PROPOSED RULE
MAKING (FCC Report No. 94-288) (“FCC 1994”)
15
incompatible with digital modern communications systems (id. at ¶ 23). The FCC
also noted the need for messages to be broadcast by more than one transmission
system, a need that may be met most easily with digital communications. (Id. at ¶
25.)
The EAS includes radio, television, and cable stations as required broadcast
transmission participants, and allows voluntary participation by satellite
communications systems, the National Weather Service, personal pagers, and
“other technologies.” (Id. at ¶¶ 40-76.) With respect to “other technologies,” FCC
1994 specifies utility companies, HDTV, telephone carriers, and cellular carriers.
(Id. at ¶¶ 73, 74.) FCC 1994 states that “we intend to expand the [National
Emergency Action Notification] to include other technologies as they become
viable in order to reach audiences not connected to cable systems.”2 (Id. at ¶ 130.)
An EAS message has four parts, consisting of EAS codes which are
predefined and catalogued by the FCC: (1) a digital header, (2) an attention signal,
(3) an audio or text message, and (4) an End of Message code. (Id. at ¶ 79, 85 of
119.) The EAS codes are predefined to identify the broadcast agent (i.e., the
2 The National Emergency Activity Notification (“EAN”) is the use of the EAS
system for a national emergency. (Ex. 1010 (FCC 1994) at ¶ 130.) Participants
are required to broadcast any of these alerts under Federal law. (Id. at ¶¶ 40-65.)
State and local participation is governed by state and local laws.
16
person that sent the message), the nature of the emergency, the location of the
emergency, and the valid time period of the emergency. (Id. at ¶ 79.) According
to FCC 1994, the “new digital EAS codes will allow system participants to relay
EAS alerts to narrowly targeted audiences.” (Id. at ¶ 94; see also, id. at ¶ 22 (“a
small geographic area could be alerted without affecting other areas”).)
The digital header comprises a preamble, an originator code, an event code,
up to 31 location codes, the valid time period of the message, and a call sign or
other identification of the broadcaster. (Id. at 85-87 of 119.) Five originator
codes, which give the type of entity originating the message are defined:
emergency action notification network (“EAN,” indicating a federal government
message), primary entry point system (“PEP,” comprised of 37 key broadcasting
stations), National Weather Service (“WXR”), civil authorities (“CIV”), and
broadcast station or cable system (“EAS”). (Id. at 87 of 119.)
The event codes describe the type of event, for example, tornado watch
(“TOA”), winter storm warning (“WSW”), and hurricane watch (“HLS”). (Id. at
87-88 of 119.)
The location codes, or Federal Information Processing System (“FIPS”)
codes, are defined in 47 C.F.R. § 11.31(d). (Id. at 89 of 119.) The location codes
for a message may specify a “whole state, a whole county, or a portion (down to
1/9th) of a county,” and also allow for cities or other areas to have their own FIPS
17
number so that a message may be directed to that city or area. (Id. at ¶ 80) Codes
can also be used to specify “schools, hospitals, neighborhoods, a single block
within a neighborhood, or individual homes.” (Id.)
The identification of the broadcaster is an eight-digit or -letter code that is
automatically affixed to all outgoing messages by the EAS encoder and is unique
for each broadcaster that transmits a message. (Id. at 87 of 119.)
An EAS message is sent over specialized equipment, an “encoder/decoder,”
that is capable of performing all of the functions of EAS, including encoding a
message to transmit to other broadcasters and decoding a message that is received
from other broadcasters. (Id. at ¶ 87.) The EAS encoder/decoder must include a
“means to store at least two minutes of audio or text message and at least 10
preselected message codes,” and security measures to ensure that no unauthorized
personnel change the preselected codes. (Id. at ¶¶ 91, 92.) For security purposes,
the preselected codes “will be automatically matched to incoming message codes.”
(Id. at ¶ 92, 90-91 of 119.) The EAS encoder/decoder must provide for the
retention of data and codes even when the power is removed. (Id. at 91 of 119.)
Once an incoming message is matched with a preselected code, the EAS
participant may (and sometimes must) broadcast that message to the public.
EAS relies on automation, but allows for manual override. (Id. at ¶ 103.)
The EAS originally included a “Red Envelope Authenticator List” which was used
18
for manual authentication of a message. (Id. at 83 of 118.) In April 2000, the FCC
amended its rules to remove the requirement for an authenticator list because “the
new EAS equipment which must be used by broadcast stations and cable operators
can process EAS messages automatically without the need for human intervention
and authentication.” (Ex. 1011 (65 FR 21657) at 21657.)
FCC 1994 does not mandate a specific device be used as the
encoder/decoder for the EAS, but requires that the device be capable of all the
functions required by EAS. (Ex. 1010 (FCC 1994) at ¶ 87.) United States Patent
5,995,553 (“Crandall”) describes an encoder/decoder designed to be compatible
with EAS.3 (Ex. 1012 (Crandall) at 1:5-7.) The encoder/decoder has an encoder
mode used to send messages and a decoder mode to receive messages. Crandall
describes the codes that the encoder/decoder will handle, including the preamble
code, originator identification code, event code, location code, and station
identification. (Id. at 7:29-48.) According to Crandall, the “location code
indicates the geographic area designated to receive the emergency alert message”
(id. at 7: 36-38), and the station identification is the “call sign or other station
identification of the broadcast station or agency office transmitting or re-
transmitting the emergency alert message.” (Id. at 7:42-44.)
3 Crandall issued on Nov. 30, 1999 and is therefore prior art to the ’954 patent
under 35 U.S.C. § 102(b).
19
B. The Push for an Updated and Improved Emergency Broadcasting Warning System
During the late 1990s, POSAs began to understand that there was a need to
standardize emergency messages so that they could be transmitted easily over
various media, including the then-fledgling World Wide Web. (Ex. 1003
(Botterell Dec.) ¶ 44.) A group, including emergency management and public
safety professionals, discussed this idea in chat rooms and email lists, including the
Networks in Emergency Management (“NETS”) email list which was moderated
by Mr. Botterell. (Id.)
In late 2000, a group within the National Science and Technology Council
Committee on Environment and Natural Resources published a report called
“Effective Disaster Warnings”—the “NSTC” document—to the emergency
preparedness management community. (Id. at ¶ 36.) The goal of the report was
“to provide a broad overview of major issues related to warning the right people at
the right time so that they can take appropriate action with respect to” a disaster.
(NSTC (Ex. 10134) at 4.) The report provided four recommendations:
4 National Science and Technology Council, Working Group on Natural Disaster
Information Systems, Subcommittee on Natural Disaster Reduction, "Effective
Disaster Warnings," November 2000 (“NSTC”).
20
First: “A public/private partnership is needed that can leverage
government and industry needs, capabilities, and resources in order to
deliver effective disaster warnings…”
Second: “One or more working groups, with representatives from
providers of different types of warnings in many different agencies…should
develop and review on an ongoing basis:
A single, consistent, easily-understood terminology that can be
used as a standard across all hazards and situations…
A single, consistent suite of variables to be included in a
general digital message…
The mutual needs for precise area-specific locating systems for
Intelligent Transportation Systems and Emergency Alert
Systems to determine where resources can be leveraged to
mutual benefit.
The potential for widespread use of the Radio Broadcast Data
System and other technologies that do not interrupt
commercial programs for transmitting emergency alerts.
Cost effective ways to augment existing broadcast and
communication systems to monitor warning information
21
continuously and to report appropriate warnings to the people
near the receiver.”
Third: “A standard method should be developed to collect and relay
instantaneously and automatically all types of hazard warnings and reports
locally, regionally, and nationally for input into a wide variety of
dissemination systems…”
Fourth: “Warnings should be delivered through as many
communication channels as practicable so that those users who are at risk
can receive them whether inside or outside, in transportation systems, or at
home, work, school, or shopping, and such…”
(Id. at 7.)
NSTC suggests a universal digitally coded warning, which would include
information about the originator of the message, the time of origination, the
intended audience, the nature of the event, the primary area of impact, message
text, and other items. (Id. at 23.) NSTC specifies that the standard way of
delivering emergency messages must prevent fraudulent uses. (Id. at 24.)
In a section called “Alternatives for Funneling Warnings into Broadcast
Systems,” NSTC discusses the EAS which “utilizes commercial radio and
television stations and cable systems to provide another way to collect and
disseminate warnings.” (Id.) Further, the internet “also provides a way to collect
22
and issue warnings.” (Id.) This section also notes that warnings are most effective
when they target the people who are at risk, and lists 7 ways of targeting these
people, all of which are geographical targeting methods: (1) using the FIPS codes
that are defined as part of the EAS; (2) using zip codes; (3) using area codes,
(4) using transmitter range of radio or TV stations; (5) by sending signals to small
regions over TV cable, wired telephones, and utility cables; (6) by targeting all
wireless telephones that are within a “cell,” or the range of wireless
communication equipment; and (7) using polygons defined by latitude and
longitude on a map. The section concludes that the polygon method is the “most
general locating system allowing arbitrary specification of region at risk.” (Id. at
26.)
NSTC describes the EAS, and states that a future objective of EAS is to
encourage “development of new consumer devices using the EAS/SAME
technology to alert the public of emergency situations.” (Id. at 28-29.)
In a section on “Other Alternatives for Delivering Warnings,” NSTC
suggests further research to support the development of warning and information
systems for mobile users, “similar to that becoming available to stationary Internet
users.” (Id. at 33.) NSTC also discloses that of the prevalence of wireless
telephones in the United States (86 million in early 2000, and an increase in usage
of 45 percent each year), and that wireless “telephones provide the capability to
23
call a person rather than simply a location, but they also allow broadcast to all
telephones within a cell or specific location without knowing which specific
telephones are currently there.” NSTC therefore concludes that this “unique ability
to reach any mobile receivers within a specific cell at a given time makes wireless
telephones an excellent existing method to deliver warnings to only those people at
risk.” (Id. at 34.)
Cell broadcast is a method by which “a message is transmitted to all the
active handsets or mobile stations (MSs) present in a cell that have the capability
of receiving short messages and have subscribed to this particular information
service.” (Peersman (Ex. 10165) at 15; see also Ex. 1005 (Surati Dec.) at ¶¶ 36-
38.) Mobile stations in this context are cellular devices such as phones that have a
“subscriber identity module,” or “SIM,” which allows a user “to access a network,
make and receive phone calls, and use all the subscribed services.” (Ex. 1016
(Peersman) at 16; see also Ex. 1005 (Surati Dec.) at ¶ 36.) For a mobile station to
receive calls, SMS text messages, or cell broadcast messages, those services must
be included as a subscribed service with the SIM. (Ex. 1005 (Surati Dec.) at ¶ 38.)
As a mobile station moves, it is supported by different base stations, or “cells,”
5 Guillaume Peersman and Srba Cvetkovic, The Global System for Mobile
Communications Short Message Service, IEEE Personal Communications, June
2000,Vol. 7, No. 3, pp. 15-25 (“Peersman”).
24
which control the link of the mobile station to the network. (Ex. 1016 (Peersman)
at 16; Ex. 1005 (Surati Dec.) at ¶ 36.) A cell broadcast message is sent by a cell to
all subscribed mobile stations within the area covered by that cell, and as explained
in the ’954 patent, a single message may reach many mobile stations without
causing significant congestion to the network. (Ex. 1005 (Surati Dec.) at ¶ 38; Ex.
1001 (’954 patent) at 4:1-5.)
Following the publication of the NSTC document, a not for profit
organization called the Partnership for Public Warning arose to “[b]ring together
representatives of all the many and diverse stakeholders to work toward a
resolution of national standards, protocols and priorities that will assure the right
information is delivered in a timely manner to people at risk from disaster, be it
natural or people induced, so that they are enabled to act knowledgeably to save
lives, reduce losses and speed recovery.” (Ex. 1003 (Botterell Dec.) at ¶ 41.) Mr.
Botterell was a founding trustee of this group, along with government employees
of FEMA,6 NOAA,7 NASA,8 the FCC, the US Geological Survey, NTIA,9 and
technology providers and social scientists. (Id.) Also following the release of the
6 The Federal Emergency Management Agency.
7 The National Oceanic and Atmospheric Administration.
8 The National Aeronautics and Space Administration.
9 The National Telecommunications and Information Administration.
25
NSTC document, the members of the NETS email list formed the Common
Alerting Protocol Working Group, which authored CAP 0.5 and other versions of
the Common Alerting Protocol (“CAP”). (Id. at ¶¶ 44-45.)
In or around June 2002, Mr. Botterell published CAP 0.5 on
www.incident.com. (Id. at ¶ 46.) CAP 0.5 is a “draft specification of open, non-
proprietary, standards-based data formats for the exchange of emergency alerts and
related information among emergency agencies and public systems.” (CAP 0.5
(Ex. 100710) at 1.) Further, the “CAP will be designed to facilitate the collection
and relay of all types of hazard warnings and reports.” (Id.) CAP 0.5 states that
the development and deployment of a standard will yield important public safety
benefits, including that “warnings to the public will be better coordinated across
the wide range of available warning and notification systems,” that “workload on
warning issuers will be reduced, since a single warning message will be compatible
with all kinds of warning delivery systems,” and that “overall ‘situational
awareness’ will be enhanced, since CAP will permit the aggregation of all kinds of
warning messages from all sources for comparison and pattern recognition.” (Id.)
The aggregation of warning messages necessarily implies that messages are stored
by the system. (Ex. 1003 (Botterell Dec.) at ¶ 48.)
10 Common Alert Protocol (v 0.5a) – Alert Message Data Dictionary (draft June 20,
2002) (“CAP 0.5”).
26
CAP 0.5 provides the code words that must be entered into an eXtensible
Markup Language (“XML”) template to draft an emergency message. (Ex. 1007
(CAP 0.5) at 1.) XML is a language designed to be portable in that it may be used
in any computing environment. (Id.; Ex. 1005 (Surati Dec.) at ¶ 43.) It therefore is
particularly suited for sharing data on the internet. (Ex. 1005 (Surati Dec.) at ¶ 44.)
Some of the variables that are included in CAP 0.5 are the source of the message,
the type of event, the location affected by the event, text of a message including
description of the event and recommended actions, and a link to a digital map of
the location of the event. (Ex. 1007 (CAP 0.5) at 2-6.)
With respect to defining the location to receive the message, CAP 0.5
provides three methods of definition. First, a user could input a series of latitude
and longitude pairs that, taken together, define a polygon. Second, a user could
input a single latitude and longitude pair along with a radius to define a circle.
Third, a user could input a text description of an area, such as “San Bernardino
County, California.” (Id. at 4.)
In November 2002, the Partnership for Public Warning published a
document called “Developing A Unified All-Hazard Public Warning System.”
(Ex. 1003 (Botterell Dec.) at ¶ 42.) The stated purpose of that report was to
“propose a national all-hazard public warning architecture and to outline some of
27
the issues that will need to be addressed in creating such an architecture.” (“PPW
Report” (Ex. 100811) at 3.)
PPW Report lists eleven “important elements of the warning process,”
among them the “reliable input of warnings from authorized sources to one or
more local and national communication backbones,” “transmission to a wide
variety of warning distribution systems,” and “distribution to user receivers.” (Id.
at 14 of 47.) PPW Report calls for the development of a unified message protocol
which must be backward compatible with EAS. (Id. at 31-33 of 47.) PPW Report
endorses CAP 0.5, finding that “expanding and adapting it might be the most
productive way to proceed.” (Id. at 34 of 47.) Appendix 2 to the report provides
comments and suggests further actions regarding various elements of CAP 0.5.
(Id. at 41-44 of 47.)
C. Technological Advances in Geographic-Based Messaging
As discussed in the NSTC document, there are many ways to target specific
areas for receiving messages, including using FIPS codes, area codes, zip codes,
transmitter ranges, wired communication signals, cell broadcast, and defining
polygons. (Ex. 1013 (NSTC) at 26.) CAP 0.5 suggests the use of polygons,
circles, or text. (Ex. 1007 (CAP 0.5) at 4.) With respect to networks, FCC 1994
11 Partnership for Public Warning Report: Developing A Unified All-Hazard Public
Warning System, dated November 25, 2002 (“PPW Report”).
28
relies on TV, radio, and cable transmission ranges, and NSTC discusses the use of
the internet for stationary users and cell broadcast for mobile users. (Ex. 1013
(NSTC) at 33; Ex. 1010 (FCC 1994) at ¶¶ 40-65.)
Many of these methods were used as part of the emergency alerting
infrastructure before 2003. As discussed, the EAS relied on FIPS codes and
transmitter ranges for radio, TV, and cable. The AMBER Alert program, which
announces details regarding missing children in a geographically defined area sent
messages through the EAS, displayed messages on billboards, and, as of 2002, sent
messages via email through the AOL AMBER Alerts initiative. (Ex. 1003
(Botterell Dec.) at ¶ 31; Ex. 1020.12)
Reiger is a published patent application that describes a message system in
which users define a region to receive the message by drawing on a map on an
internet page interface. Using the system in Reiger, “targeted users, i.e., those
whose geographical location falls within the bounded region of a posting, receive
notification of the posting either automatically or via email.” (Ex. 1009 (Reiger) at
¶ 3.) The system is designed to deliver messages to mobile users and stationary
users. “Mobile users who pass through the targeted area of various postings can
automatically receive those postings via their wireless connection as they travel.”
12 Arianne Aryanpur, AOL to Start Issuing ‘Amber Alerts’ on Web, LA Times,
October 1, 2002, http://articles.latimes.com/2002/oct/01/nation/na-amber1.
29
(Id. at ¶ 4.) The system in Reiger “empowers people to communicate with one-
another through geography, rather than by individual identity.” (Id. at ¶ 11.)
Reiger discloses exemplary uses for its system, including, for example, to
ask questions of a local population, to ask questions of a larger population, to post
community or regional announcements, to advertise, and to post traffic and road
construction news. (Id. at ¶¶ 12-20.) Posts could be categorized as “community
services,” “emergency news,” or “fast food coupons.” (Id. at ¶ 157.) Government
agencies may be permitted to post weather messages. (Id. at ¶ 81.)
The Reiger system relies on “any type of communications network” (id. at
¶ 70), and exemplifies the internet. (Id.) Part of the Reiger system is similar to the
AOL AMBER Alerts program, which also sends messages over the internet. (Ex.
1003 (Botterell Dec.) at ¶ 54.) The system provides an interface which users can
use to compose messages. (Ex. 1009 (Reiger) at ¶ 73.) A post consists of an
“identification tag that describes who has posted it” (id. at ¶ 77), an “information
component, which is the content of the posting” (id. at ¶ 78), and a “broadcast”
descriptor, which identifies the posting’s geographical target region(s) (id. at ¶ 79).
The system’s administrator may restrict “postings created by any particular
user by defining geographic regions into which the user is either authorized or
unauthorized to post.” (Id. at ¶ 81.) That restriction may be accomplished by, for
30
example, providing users with passwords stored in the system that define the area
in which a user is permitted to post. (Id. at ¶¶ 81, 102.)
To post a message, a user must first input his logon and password
information. (Id. at ¶¶ 175-76.) Once logged-on, different users have access to
different “user channels,” which are “an abstract analog of physical radio and TV
stations, although user channels afford a more precise control over the broadcast
area than their real-world counterparts.” (Id. at ¶¶ 153-54.) The system includes at
least four channel types, including “abstract,” “public,” “commercial,” and
“restricted.” (Id. at ¶ 57.) The restricted channel type is made available only to
users “who have positively identified themselves as relevant users of the channel,
e.g., the “McLean VA Police Emergency” channel. Restricted channels will
generally have an associated broadcast region…” (Id.)
Reiger discusses users that have registered to receive specific types of
messages in specific areas. These users may receive messages as they are posted
and are also able to search old, stored messages to find ones that may be of
interest. (Id. at ¶¶ 76, 77.) Reiger also discloses that users need not register, for
example, mobile users, and that these non-registered users may receive messages
pertinent to their locations because they are in those locations. (Id. at ¶ 89.) Dr.
Surati explains that a POSA would have understood that mobile, internet-
connected devices would need a pre-installed service to receive these messages.
31
(Ex. 1005 (Surati Dec.) at ¶ 49; see also Ex. 1008 (PPW Report) at 24 (suggesting
the use of a “specialized chip embedded in any variety of devices” to receive
emergency messages); Ex. 1001 (’954 patent), 11:36-37 (“Users may be required
to turn one or more function of their phone.”).) This service would have been
installed by the manufacturer of the device, in much the same way that the ability
to receive cell broadcast service is pre-installed by cellular phones manufacturers.
(See Ex. 1005 (Surati Dec.) at ¶ 49.) In both cases, the device must be configured
to receive a specific type of message over a given network, and in both cases, the
user need not specifically subscribe to receive messages of any type. (Id.)
VIII. OVERVIEW OF CHALLENGE AND PRECISE RELIEF REQUESTED
In Ground 1, Petitioner challenges claims 17 and 23 as obvious over
“Report and Order and Further Notice of Proposed Rule Making” (“FCC 1994,”
(Ex. 1010)), “Effective Disaster Warnings” (“NSTC,” (Ex. 1013)), and “Common
Alerting Protocol v.0.5a” (“CAP 0.5,” (Ex. 1007)). These documents relate to the
government’s efforts to create an effective public warning system, and therefore, a
POSA would have considered each relevant to broadcasting systems. (Ex 1003
(Botterell Dec.) at ¶ 27; Ex. 1005 (Surati Dec.) at ¶ 55.) None of them was before
the examiner during prosecution of the ’940 application.
FCC 1994 describes the Emergency Alert System (“EAS”), including its
history, the need for the EAS, and the components and procedures that collectively
32
comprise the EAS. These components and procedures include all the limitations of
claims 17 and 23 of the ’954 patent, including the steps of collecting broadcast
messages from a plurality of originators, receiving the messages over an input
interface, storing message jurisdiction(s) for broadcast agents, verifying an
authority of the broadcast agent to send that message to the broadcast target area,
and transmitting the message.
To the extent Patent Owner argues that claims 17 and 23 require
transmission of broadcast messages over a cell broadcast network, FCC 1994
specifically calls for updating EAS as new technologies emerge. Further, NSTC, a
document with the express purpose of improving the existing EAS, suggests using
cellular broadcasts to broadcast alerts. And, to the extent that Patent Owner argues
that claims 17 and 23 require an internet-based interface for receiving messages,
CAP 0.5, a document drafted in response to suggestions in NSTC, provides that
interface.
As it states on its face, FCC 1994 is a report released by the FCC on
December 9, 1994. (See Ex. 1010 (FCC 1994) at 1 of 119.) According to the
document, it was printed in Volume 10, No. 4 of the FCC Record, which is
described as “A Comprehensive compilation of decisions, reports, public notices
and other documents of the Federal Communications Commission of the United
States.” (Id.) The 10th volume of the FCC Record was printed in February 1995.
33
(Id.) As a public document issued by a governmental agency, and printed in an
official United States compilation more than one year prior to the earliest
purported filing date associated with the ’954 patent, FCC 1994 is a printed
publication and is prior art to the ’954 patent under 35 U.S.C. § 102(b). (See FRE
902(5)).
A POSA would have known to look to FCC publications including FCC
1994 as relevant to the area of broadcast messaging, and particularly broadcast
emergency messaging for many reasons. First, the FCC is a government agency
responsible for regulating emergency broadcasting. (See, e.g., 47 U.S.C. § 303(r);
Ex. 1003 (Botterell Dec.) at ¶ 27.).) Second, the EAS as described in FCC 1994
was finalized after a period of notice and comments from the interested public,
which consisted of POSAs. (Ex. 1010 (FCC 1994) at, e.g., ¶¶ 13-15.) Third,
radio, TV, and cable stations, which were run by broadcast professionals who were
POSAs, were required by law to participate in the EAS, as stated in FCC 1994, and
were required to have an EAS handbook in the broadcasting station. (Id. at ¶¶ 40-
65, 142.)
NSTC is a report by the Working Group on Natural Disaster Information
Systems Subcommittee on Natural Disaster Reduction, called “Effective Disaster
Warnings,” as stated on its face. The document has the seal of the Office of the
President of the United States on its cover and states that it was intended to be a
34
“valuable reference” to aid scientists, engineers and emergency managers in
“implementing advanced technologies for delivering warnings to people at risk.”
(Ex. 1013 (NSTC) at 1, 4.) As an official document issued by the Federal
Government, and distributed to POSAs more than one year prior to the earliest
filing date of the ’954 patent, NSTC is a printed publication and prior art to the
’954 patent under 35 U.S.C. § 102(b). (See FRE 902(5).) Page 5 of the document
lists the Working Group that was involved in the compilation of the report, which
includes Peter Ward of the U.S. Geological Survey as Chairman. (Id. at 5.) Mr.
Botterell knows many of these people and, based at least on their professional
experience, many of them were POSAs. (Ex. 1003 (Botterell Dec.) at ¶ 35.) Page
56 includes a list of other individuals who contributed to the report, and many of
these people were POSAs, as well. (Ex. 1013 (NSTC at 56; Ex. 1003 (Botterell
Dec.) at ¶ 35.)
This document was circulated in or around November 2000 to POSAs via
email, and was posted online in various locations including on the web page of the
Subcommittee on Disaster Reduction of the White House’s National Science and
Technology Council. (Ex. 1003 (Botterell Dec.) at ¶ 36.) NSTC was featured in
an article written by Peter Ward, in the periodical Natural Hazards Observer in
June 2001, which, in addition to describing the document, gave information about
35
where it could be accessed online. (“Observer,” (Ex. 101413) at 3-4.) As Mr.
Botterell testifies, the Observer was a publication disseminated by the Natural
Hazards Research and Applications Center of the University of Colorado, and was
read by people skilled in the art of emergency management and alerting. (Ex. 1003
(Botterell Dec.) at ¶ 37.) Further, a POSA would have known that NSTC was a
landmark document in the field of emergency broadcasting, would have been
aware that it was referred to as the “Red Book” among POSAs, and would have
looked to it as guidance for the development of improved methods of emergency
warning. (Ex. 1003 (Botterell Dec.) at ¶¶ 27, 35-36.)
CAP 0.5 is a draft of the Common Alerting Protocol (“CAP”) document
dated June 20, 2002. CAP 0.5 was published by Mr. Botterell to POSAs on or
about June 20, 2002, on the website www.incident.com, a website owned by Mr.
Botterell which was visited by a variety of interested parties from government
(both nationally and internationally), academia, and technology developers and
providers.14 An Internet Archive capture of the page www.incident.com/cap from
July 2, 2002 corroborates Mr. Botterell’s recollection that he published CAP 0.5 on
or about June 20, 2002. (See Ex. 1021 (Internet Archive of www.incident.com/cap
13 Peter L. Ward, Effective Disaster Warning: A National Tragedy, Natural Hazards
Observer, July 2001, Vol. XXV, No. 6, pp. 3-4.
14 This website is no longer connected with Mr. Botterell.
36
from July 2, 2002). The CAP 0.5 document at Ex. 1007 is the document at the link
on this archived page titled “Data Dictionary.”)
Many readers of the information posted on incident.com also contributed
comments to those posts that were posted on the website, in addition to the original
post by Mr. Botterell. (See, e.g., Ex. 101515; Ex. 1003 (Botterell Dec.) at ¶¶ 46-
47.) Mr. Botterell is familiar with many of these people, who were POSAs based
on their professional experience. (Ex. 1003 (Botterell Dec.) at ¶ 47.) As Mr.
Botterell explains, he and other POSAs designed CAP in response to and following
the recommendations in NSTC and other emergency alert guidance documents. A
document published by the Partnership for Public Warning, a group having the
purpose of advancing the goals set forth in NSTC, commented on CAP 0.5 and
suggested actions that could be taken to improve CAP.16 (“PPW Report,” (Ex.
15 Comments posted on www.incident.com
(https://web.archive.org/web/20050308044329/http://www.incident.com/pipermail
/cap-interop.mbox/cap-interop.mbox).
16 The Partnership for Public Warning was a group of emergency managers,
technology providers, and academics concerned with the state of public warning
systems in the United States. (Ex. 1003 (Botterell Dec.) at ¶ 41.) Mr. Botterell
was one of seventeen founding trustees of the non-profit Partnership for Public
Warning groups. (Id.) The PPW document was published online, and transmitted
37
1008) at 34, 41 of 47; Ex. 1003 (Botterell Dec.) at ¶ 45.) Therefore, CAP 0.5 is a
printed publication and is prior art to the ’954 patent under 35 U.S.C. § 102(b).
Further, a POSA would have been aware of the development of CAP as a protocol
to be used to collect and send emergency broadcast alerts and would have looked
to it as guidance for developing any improved system. (Ex. 1003 (Botterell Dec.)
at ¶¶ 44-63.)
In Ground 2, Petitioner challenges claims 17 and 23 as obvious over U.S.
Patent Application Publication No. 2002/0103892 (“Reiger,” (Ex. 1009)) in
combination with NSTC. (Ex. 1013). Reiger discloses a system for posting
information to a geographical region, and includes all of the elements of claim 17
of the ’954 patent. Specifically, Reiger discloses the steps of collecting broadcast
messages from a plurality of originators, receiving the messages over an input
interface, storing message jurisdiction(s) for broadcast agents, verifying an
authority of the broadcast agent to send that message to the broadcast target area,
and transmitting the message. Reiger provides that the message may be sent over
“any type of communications network,” and exemplifies an internet-based
messaging system. NSTC discusses collecting broadcast messages from two or
more sources and broadcasting messages using two or more broadcast messaging
to various federal agencies, including FEMA, and the National Weather Service.
(Id. at ¶ 42.)
38
systems, including cellular broadcasting, radio broadcasting and television
broadcasting, to provide geographically targeted messages to the public.
Reiger was published by the United States Patent and Trademark Office on
August 1, 2002 and is therefore a printed publication and prior art to the ’954
patent under 35 U.S.C. § 102(b). Reiger is pertinent to the art of broadcast
messaging systems, including emergency broadcast systems, and a POSA therefore
would have been aware of Reiger as of 2004 and would have looked to Reiger for
guidance on improving existing broadcast message systems. (Ex. 1003 (Botterell
Dec.) at ¶¶ 52, 65; Ex. 1005 (Surati Dec.) at ¶ 48.)
This petition is supported by the Expert Declaration of Mr. Art Botterell.
(Ex. 1003.) Mr. Botterell is an expert in emergency warning and preparedness and
has significant experience developing software for emergency broadcasting
systems. (See Ex. 1004 (CV of Mr. Art Botterell).) This petition is further
supported by the Expert Declaration of Dr. Rajeev Surati, Ph.D. (Ex. 1005). Dr.
Surati has many years of experience in the fields of messaging,
telecommunications, and more generally, electrical engineering and computer
science. (See Ex. 1006 (CV of Dr. Rajeev Surati).)
The petition and supporting declarations show there is at least a reasonable
likelihood that Petitioner will prevail as to the challenged claims. See 35 U.S.C.
39
§ 314(a). Petitioner respectfully requests institution of inter partes review and
cancellation of claims 17 and 23.
IX. CLAIM CONSTRUCTION
Because the ’954 patent has not yet expired, and will not expire during the
pendency of this proceeding, the challenged claims should be given their broadest
reasonable construction in light of the patent specification. 37 C.F.R. § 42.100(b);
see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). For
purposes of this IPR only, Petitioner adopts the following constructions as the BRI
of each term. Also for purposes of this IPR only, Petitioner will assume that claim
17’s preamble is limiting.
For purposes of this IPR only, Petitioner adopts the claim construction
proposed by Patent Owner in IPR2017-00180: “broadcast” means “pertaining to
transmission to all recipients in a target area and not to an identified recipient” and
“broadcast network” means “a message that is intended for transmission to all
recipients in a target area and not an identified recipient.” In IPR2017-00180,
Patent Owner explained its position on these terms in pages 11-18 of its
Preliminary Response. (Ex. 1022.) Patent Owner there stated that these
constructions were supported by the specification.
40
X. Ground 1: Claims 17 and 23 are Obvious Over FCC 1994, NSTC, and CAP 0.5
A. Scope and Content of the Prior Art
The scope and content of the prior art is described above, in Section VII.
The scope and content of the prior art also includes the discussion regarding the
grounds of invalidity, in Section VIII.
B. Level of Ordinary Skill in the Art
The level of ordinary skill in the art is described above, in section VI.
C. Differences Between the Claims and the Prior Art and Conclusion of Obviousness
Claim 17 has 5 elements, each of which is taught by the combination of FCC
1994, NSTC and CAP 0.5. Element 1, the preamble requiring a method of
“collecting broadcast messages from a plurality of broadcast message originators
and providing a broadcast message to two or more of a plurality of broadcast
message transmission systems for broadcasting…within a geographically defined
broadcast target area,” is the topic of FCC 1994, which describes the creation of
the EAS and its protocols. (Ex. 1010 (FCC 1994).) The broadcasting described in
FCC 1994 is designed to allow for precise geographic targeting of messages and is
accomplished by television, radio, cable and other types of broadcasters, who
receive a message via a decoder, and, after the decoder validates the message,
transmit that message to their broadcasting audience that is within the
41
geographically defined area. (Id. at ¶ 94 (“the new digital EAS codes will allow
system participants to relay EAS alerts to narrowly targeted audiences.”).)
FCC 1994 suggests that broadcast message systems be configured to receive
broadcast message requests from a plurality of sources simultaneously. (Id. at ¶ 97
(“We further proposed that the equipment be capable of receiving emergency
programming from two different sources and that other input ports be used for
receiving and decoding signals from other transmission media. . .”).) FCC 1994
also stresses the need to transmit messages over multiple systems: “No one
transmission system could, in isolation, sufficiently achieve our goals for EAS.”
(Id. at ¶ 34.)
Using the system described in FCC 1994, a broadcast message is transmitted
to the public by a plurality of broadcast messaging systems, such as radio, TV, and
cable networks. (Id. at ¶¶ 34-36, 40-65.) For all of these, no action is required by
a member of the public in order to receive the broadcast message, i.e., there is no
need to subscribe to the messaging service as a separate service because it comes
included with all purchased radios or TVs or all general cable subscriptions. (Ex.
1005 (Surati Dec.) at ¶ 57.) Further, the broadcasting radio or TV network
transmits messages without having any knowledge of the identity or number of
listeners. (Id.) Instead, for example, all listeners with radios in the transmitter
range of the broadcasting radio receive the broadcast message. (Id.) The network
42
congestion is not affected by the number of radios that receive the broadcast
message. (Id.)
NSTC and CAP 0.5 provide technological updates to the system described in
FCC 1994, and were written with the intent that the ideas would be used to
improve and modernize the EAS described in FCC 1994. (Ex. 1013 (NSTC) at 28;
Ex. 1008 (PPW Report) at 34 of 47 (endorsing the use of CAP 0.5 as an update to
EAS); Ex. 1003 (Botterell Dec.) at ¶¶ 35, 44, 63.)
NSTC explains the need to transmit broadcast messages from as many
broadcasting systems as possible: “Warnings should be delivered through as many
communication channels as practicable so that those users who are at risk can
receive them whether inside or outside, in transportation systems, or at home,
work, school, or shopping, and such.” (Ex. 1013 (NSTC) at 7.) NSTC specifically
suggests the use of cell broadcast, the exemplary network described in the ’954
patent, to transmit broadcast messages to cellular receivers within specific cells
and also discusses the use of cable and TV as networks for sending messages. (Ex.
1013 (NSTC) at 34.) Use of the NSTC-suggested cell-broadcast update in the
existing EAS system would result in a broadcast message system that includes all
of the features of EAS, i.e., receiving messages, storing preselected codes, and
verifying the authority of broadcast agents, but transmits messages over a cell
broadcast network, instead of or in addition to over radio and TV networks. (Ex.
43
1003 (Botterell Dec.) at ¶ 62; Ex. 1005 (Surati Dec.) at ¶¶ 63-64.) Using cell
broadcast would allow for geographic targeting based on cells, as described in the
’954 patent’s PLBC network. (Ex. 1003 (Botterell Dec.) at ¶ 62; Ex. 1005 (Surati
Dec.) at ¶¶ 63-64.)
NSTC also recommends the development of a “standard method… to collect
and relay messages instantaneously and automatically all types of hazard warnings
and reports locally, regionally, and nationally for input into a wide variety of
dissemination systems.” (Ex. 1013 (NSTC) at 7.) CAP 0.5 was intended to collect
and aggregate emergency messages from a number of sources for dissemination.
(Ex. 1003 (Botterell Dec.) at ¶ 44; see also Ex. 1006 (CAP 0.5) at 1 (“Overall
‘situational awareness’ will be enhanced, since CAP will permit the aggregation of
all kinds of warning messages from all sources for comparison and pattern
recognition.”).)
NSTC suggests that the internet be used to collect messages. (Ex. 1013
(NSTC) at 24 (“The Internet also provides a way to collect and issue
warnings…”).) CAP 0.5 provides an XML protocol, usable in many software
environments and particularly suited for internet use as an interface. (Ex. 1003
(Botterell Dec.) at ¶ 48; Ex. 1005 (Surati Dec.) at ¶ 59.) CAP 0.5 allows users to
input broadcast message requests, which are then received by an internet page host
that processes the message. (Ex. 1007 (CAP 0.5).)
44
Using the NSTC-suggested update of an internet-based interface in the
existing EAS system would result in a broadcast message system that included all
of the features of EAS, i.e., receiving messages, storing preselected codes, and
verifying the authority of broadcast agents, but that sent and received messages
before broadcasting those messages over an internet interface instead of the
encoder/decoder interface described in FCC 1994. (Ex. 1003 (Botterell Dec.) at ¶
62; Ex. 1005 (Surati Dec.) at ¶¶ 63-64.)
It would have been obvious to a POSA to use CAP 0.5 with the existing
messaging structure of EAS because CAP 0.5 was designed to enhance the features
and capabilities of EAS. (Ex. 1003 (Botterell Dec.) at ¶ 63; Ex. 1008 (PPW
Report) at 33 of 47.) Indeed, the second and third stated goals of NSTC were to
develop standard protocols by which to receive, send and broadcast emergency
messages from multiple sources via multiple transmission systems. (Ex. 1013
(NSTC) at 7; (Ex. 1003 (Botterell Dec.) at ¶ 35.) CAP 0.5 provides that standard,
and was endorsed by the emergency preparedness community. (Ex. 1008 (PPW
Report) at 34 of 47.)
Since NSTC and CAP 0.5 were each written to improve upon EAS, and
since the cell broadcast and internet technologies were known, a person of ordinary
skill in the art would have been motivated to combine the network in NSTC and
the internet-based interface in CAP 0.5 with the EAS system described in FCC
45
1994, and would have had a reasonable expectation that the resulting combination
would comprise a useful broadcasting system that transmits messages within a
geographically defined area. (Ex. 1003 (Botterell Dec.) at ¶ 63; Ex. 1005 (Surati
Dec.) at ¶ 63.)
Further, the use of cell broadcast instead of or in addition to TV and radio
networks for transmitting broadcast messages and the use of an internet-based
interface instead of the encoder/decoder interface of FCC 1994 each comprises
merely the simple substitution of “one known element for another.” Asyst Techs.,
Inc. v. Emtrak, Inc., 544 F.3d 1310, 1315 (Fed. Cir. 2008). Moreover, “applying
modern electronics to older mechanical devices,” and “adapting existing electronic
processes to incorporate modern internet and web browser technology,” were both
common in the early 2000s, and both represent obvious modifications of older
systems. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326 (Fed. Cir.
2008). In this case, the modernization of EAS is particularly obvious because EAS
was designed to evolve with technology. (See Ex. 1010 (FCC 1994), 1834 (“We
intend to expand the EAN to include other technologies as they become viable in
order to reach audiences not connected to cable systems.”).) See also Agrizap, Inc.
v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008) (“This is a textbook case of
when the asserted claims involve a combination of familiar elements according to
known methods that does no more than yield predictable results. The only
46
differences between the [prior art] and the asserted claims…is the type of switch
used to complete the circuit that triggers the generator. The asserted claims simply
substitute a resistive electrical switch for the mechanical pressure switch employed
by the prior art.”)
Element 2, the receiving element, requires “receiving over an input interface
a plurality of broadcast message requests, each broadcast message request
including a broadcast agent identification uniquely identifying the broadcast agent
originating the broadcast message request, a geographically defined broadcast
target area, and a broadcast message from one of a plurality of coupled broadcast
agent message origination systems.” Each of EAS, NSTC, and CAP 0.5 discuss
receipt of a plurality of messages. EAS, as described in FCC 1994, suggests
equipment be capable of receiving messages from at least two different sources.
(Ex. 1010 (FCC 1994) at ¶ 97.) NTSC suggests monitoring of emergency
broadcast message systems at the local, regional and national levels. (Ex. 1013
(NTSC) at 7.) CAP 0.5 permits “the aggregation of all kinds of warning messages
from all sources for comparison and pattern recognition.” (Ex. 1007 (CAP 0.5) at
1.) Both FCC 1994 and CAP 0.5 require a broadcast message request include the
identification of the broadcast agent, the text of the broadcast message, and the
geographically defined area meant to receive the broadcast message.
47
The message header required by FCC 1994 includes, among other things, the
identification of the broadcast agent (represented by “LLLLLLL” in the EAS rules
(Ex. 1010 (FCC 1994) at 86 of 119)) and the area which is impacted by the event,
defined by a FIPS code. (Id. at ¶ 80.) A FIPS code may refer to an area as small
as 1/9th of a county within a state, or may be pre-defined to specify a particular
area, which may be a small as a single household. (Id.)17 FCC 1994 also provides
for the inclusion of text in the broadcast message request. (Id. at 85 of 119.)
CAP 0.5 provides an XML template to be filled in by a broadcast agent.
(Ex. 1007 (CAP 0.5).) This template has an input field for the “source,” which
“[i]dentifies the originator of this alert.” There also is an input field for text with
the name or description of the message originator. (Id. at 2.) The template also
has input fields for the text of the message, including one to describe the target
audience, one to describe the event, and one to recommend action. (Id. at 4)
Another input field is for the definition of the geographic area to receive this
17 If Patent Owner argues that the location where an event happens in FCC 1994 is
not the same as the location where a message should be sent, Crandall, which was
filed in 1997 and published in 1999, confirms the contemporaneous understanding
that the EAS location code giving the location impacted by an event determines the
location that will receive the message. (Ex. 1012 (Crandall) at 7:36-38; see also
Ex. 1003 (Botterell Dec.) at ¶ 33.)
48
message. (Id.) The area may be precisely defined by giving the name of the area,
providing a circle of any radius around the area, or by defining a polygon with
latitude and longitude pairs. (Id.) Defining a polygon is the most general way to
target a broadcast area and is as precise as drawing an area on a map. (Ex. 1013
(NSTC) at 26; Ex. 1003 (Botterell Dec.) at ¶ 49.) Since the combination of FCC
1994, NSTC and CAP 0.5 would have been obvious as explained above, and since
the combination discloses all features of the receiving element, this element is
obvious over FCC 1994, NSTC, and CAP 0.5. (Ex. 1003 (Botterell Dec.) at ¶¶ 62-
63; Ex. 1005 (Surati Dec.) at ¶¶ 64.)
Element 3, the storing element, requires “storing a broadcast message
jurisdiction authority for each broadcast message originator.” The EAS, as
described in FCC 1994, required that EAS encoder/decoders store preselected
message codes. (Ex. 1010 (FCC 1994) at ¶ 91.) These preselected codes are
chosen by the EAS participants as codes that are automatically approved for
sending because the codes for the broadcast agent, the area to which the broadcast
is to be transmitted, and the other information in the codes are pre-approved. (Id.
at ¶ 93.) Preselected codes of state and local area emergencies are stored as well.
(Id. at ¶ 93.)
FCC 1994 states that the EAS system should be updated as new technologies
become available. (Ex. 1010 (FCC 1994) at ¶ 76; see also Ex. 1013 (NSTC) at
49
33.) While the original requirement for EAS was to store only ten preselected
codes, and for operators to check the “Red Envelope” list of authenticated users
upon receipt of a non-stored code (Ex. 2005 (FCC 1994) at 83 of 119), the updates
to the EAS rules state that complete automatic operation obviated the need for any
human input as of 2000, which means that the encoder/decoder itself was capable
of authenticating all codes, not just ten “preselected” codes. (Ex. 1011 (65 FR
21657) at 21657.) In other words, the encoder/decoder had the capacity to store
and verify a jurisdiction for each broadcast message originator. (Ex. 1003
(Botterell Dec.) at ¶ 58 (claim chart).)
An update to the EAS that was made by, for example, implementing CAP
0.5 or changing to a cell broadcast system as suggested by NSTC, would still
require a match between stored codes and requested messages. (See Ex. 1008
(PPW Report) at 33 of 47) requiring that any system be backwards compatible with
EAS; Ex. 1003 (Botterell Dec.) at ¶ 62.) Therefore, the storing element disclosed
by FCC 1994 is obvious over FCC 1994, NSTC, and CAP 0.5. (Ex. 1003
(Botterell Dec.) at ¶ 62; Ex. 1005 (Surati Dec.) at ¶¶ 63-64.)
Element 4, the verifying element, requires that the messaging system
“verify[] an authority of the broadcast agent identification including an authority of
the originating broadcast agent to send the broadcast message to the broadcast
target area...” FCC 1994 requires that an incoming broadcast message request
50
“matches” the stored preselected codes. (Ex. 1010 (FCC 1994) at ¶ 93.) As
explained above with respect to Section 3, the preselected codes are combinations
of broadcast agents, message originators, areas and other information that, when
received as part of a broadcast message, are preapproved for transmission.
Therefore, this “matching” step described in FCC 1994 verifies the authority of the
broadcast agent to send a broadcast message to the target area. (Ex. 1003
(Botterell Dec.) at ¶ 30; Ex. 1005 (Surati Dec.) at ¶ 64.)
Full automation of the authorization process was possible as of at least
2000, as explained above, which means that as of 2000, all verifications were done
by computer. Any update to EAS by, for example, CAP 0.5, would still require a
“match” between pre-stored allowed messages and an incoming message request.
(See Ex. 1008 (PPW Report) at 33 of 47, requiring that any system be backwards
compatible with EAS; Ex. 1003 (Botterell Dec.) at ¶ 62.) Therefore, section 4 is
disclosed by FCC 1994, and is obvious over the combination of FCC 1994, NSTC,
and CAP 0.5. (Ex. 1003 (Botterell Dec.) at ¶¶ 62-63; Ex. 1005 (Surati Dec.) at ¶¶
63-64.)
Element 5, the transmitting element, requires “determining two or more
broadcast transmission systems…and transmitting the broadcast message of each
verified broadcast message request over an output interface…” EAS described in
FCC 1994 requires that all radio and TV stations transmit validated EAN messages
51
into their respective communications networks. (Ex. 1010 (FCC 1994) at ¶¶ 40-
65.) FCC 1994 also allows the system to be used for state and local broadcasting.
(Id. at ¶¶ 131-35.) When used for state and local of messages, only transmission
systems that are determined to be relevant to the message (i.e., local TV and radio
stations) will transmit the message. (Id. at ¶ 134 (“State and local plans will
become even more important under EAS because they will specify which alerts
will be transmitted by key EAS sources in a State and local area.”); Ex. 1003
(Botterell Dec.) at ¶ 58 (claim chart).) By this system, these EAS participants
broadcast the broadcast message to their listening audience, which include at least
a portion of the defined geographic area. (Ex. 1003 (Botterell Dec.) at ¶ 62; Ex.
1005 (Surati Dec.) at ¶ 57.) NSTC explains how TV, cable, and radio networks
transmit messages to specific areas:
Transmitter Range: A natural selection spatially is done by the
restricted transmission range of radio or television stations or by the
restricted areas serviced by cable television.
(Ex. 1013 (NSTC) at 26; see also, Ex. 1005 (Surati Dec.) at ¶ 57.)
NSTC also suggests using cell broadcast as a network, the same network
exemplified in the ’954 patent, which would effectuate transmission of the
broadcast message to all receivers within a cell. (Ex. 1005 (Surati Dec.) at ¶ 38.)
For local messages, NTSC teaches the transmission of messages only via a relevant
cell in the target area. (See Ex. 1013 (NSTC) at 26 (“Warnings will be most
52
effective when they can be targeted directly to the people at risk.”).) It would have
been obvious to use the NSTC-suggested cell-broadcast network with the existing
EAS including TV, radio, and cable networks, because that combination meets one
of the stated goals of NSTC: “Warnings should be delivered through as many
communication channels as practicable so that those users who are at risk can
receive them whether inside or outside, in transportation systems, or at home,
work, school, or shopping and such.” (Ex. 1013 (NSTC) at 7; Ex. 1003 (Botterell
Dec.) at ¶ 61.) Therefore, element 5 (the transmitting element) is disclosed by
FCC 1994 and NSTC and is obvious over the combination of FCC 1994, NSTC,
and CAP 0.5. (Ex. 1003 (Botterell Dec.) at ¶¶ 62-63; Ex. 1005 (Surati Dec.) at ¶¶
63-64.)
Claim 23, which depends from claim 17, further requires that the broadcast
message be transmitted over “two or more broadcast message transmission systems
selected from the group consisting of a wireless mobile carrier network; . . . an
internet provider; …a CATV network; a radio system; and a television system.”
As discussed above, FCC 1994, NTSC and CAP 0.5 explicitly disclose the use of
cell broadcast, the internet, radio and television systems as transmission media for
use with a broadcast message system.
As explained above, a POSA would have been motivated to combine the
teachings in FCC 1994, NSTC, and CAP 0.5 because they all concern the EAS,
53
and the two later-in-time documents, NSTC and CAP 0.5, were designed to be
used with the existing EAS described in FCC 1994. (Ex. 1003 (Botterell Dec.) at
¶¶ 35, 44, 63; Ex. 1005 (Surati Dec.) at ¶ 60.) By combining these references to
the determined two or more broadcast message transmission systems, a POSA
would have had a reasonable expectation of arriving at a broadcast messaging
system that would effectively delivery messages to unidentified recipients in a
target area. (Ex. 1003 (Botterell Dec.) at ¶ 63; Ex. 1005 (Surati Dec.) at ¶ 63.)
These references cumulatively teach all of the limitations of claims 17 and 23,
rendering these claims obvious. (Ex. 1003 (Botterell Dec.) at ¶¶ 62-63; Ex. 1005
(Surati Dec.) at ¶¶ 63-64.)
D. Lack of Secondary Considerations
Petitioner is unaware of any secondary considerations that would support a
finding of non-obviousness. (See also Ex. 1003 (Botterell Dec.) at ¶ 64; Ex. 1005
(Surati Dec.) at ¶ 65.) Further, even if any secondary considerations exist, they
cannot overcome the strong prima facie case of obviousness demonstrated above.
Western Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1373 (Fed.
Cir. 2010) (“[W]eak secondary considerations generally do not overcome a strong
prima facie case of obviousness.”); see also ClassCo, Inc. v. Apple, Inc., 838 F.3d
1214, 1222 (Fed. Cir. 2016). Petitioner reserves the right to respond to any
allegations of secondary considerations submitted to the Board by Patent Owner.
54
XI. GROUND 2: CLAIMS 17 AND 23 ARE OBVIOUS OVER REIGER AND NSTC
A. Scope and Content of the Prior Art
The scope and content of the prior art is described above, in Section VII.
The scope and content of the prior art also includes the discussion regarding the
grounds of invalidity, in Section VIII.
B. Level of Ordinary Skill in the Art
The level of ordinary skill in the art is described above, in Section VI.
C. Differences Between the Claims and the Prior Art and Conclusion of Obviousness
Reiger and NSTC concern the field of broadcasting messages, and both have
the stated goal of reaching a geographically targeted audience. (Ex. 1009 (Reiger)
at Abstract; Ex. 1013 (NSTC) at 26.) Both also discuss sending emergency
messages. (Ex. 1009 (Reiger) at ¶ 57; Ex. 1013 (NSTC).) Therefore, a POSA
would have been motivated to consider the two references together in developing a
broadcast message system. (Ex. 1003 (Botterell Dec.) at ¶ 65; Ex. 1005 (Surati
Dec.) at ¶ 70.) Reiger teaches all of the elements of claim 17, except, perhaps, the
precise method by which broadcast messages are transmitted and the use of
multiple broadcast transmission systems to transmit the messages. (See Ex. 1003
(Botterell Dec.) at ¶ 66; Ex. 1005 (Surati Dec.) at ¶¶ 70-71.) These elements are
taught by NSTC, which also provides the motivation to incorporate the use of cell-
broadcast and other networks into the existing, internet-based Reiger system. (See
55
Ex. 1013 (NSTC) at 24 (“The Internet also provides a way to collect and issue
warnings…”).)
Reiger discloses a method of transmitting broadcast messages to a
geographically defined target area, as required by element 1 of claim 17. (Ex.
1009 (Reiger) at Abstract (“A communications system to post arbitrary
information to any geographical region simply by outlining the region on a map in
the system’s user interface and attaching the information to the outlined region is
provided.”).) Reiger provides that a user could define an area by drawing on a
map. (Id. at Fig 11 and ¶ 11.)
The system described in Reiger does not require any action by a user prior to
receiving a broadcast message, i.e., there is no need to subscribe to the service.
(Id. at ¶¶ 88-89 (“A transient accounts manager 127 tracks users who have
connected to the communications server 111 but who have no registered
accounts…”).) The broadcast system exemplified in Reiger is the internet.
According to Reiger, mobile users automatically and periodically connect to the
internet using a wireless channel which provides its location to the internet
network. (Id. at ¶ 88.) Further, the system in Reiger does not identify all of the
users prior to their receiving the broadcast messages: “This invention empowers
people to communicate with one-another through geography, rather than by
56
individual identity.” (Id. at ¶ 11; see also Ex. 1003 (Botterell Dec.) at ¶ 66; Ex.
1005 (Surati Dec.) at ¶¶ 69-70.)
With respect to “collecting” messages from a “plurality” of broadcast agents,
as required in the preamble, Reiger discloses the collection of messages from a
plurality of users. (Ex. 1009 (Reiger) at ¶ 70-72.) NSTC also stresses the
importance of collecting or “aggregating” messages from different sources. (Ex.
1013 (NSTC) at 7.)
With respect to “providing” the message to “two or more of a plurality of
broadcast message transmission systems” as required in the preamble, Reiger,
explicitly suggests that the communications server “could be part of any type of
communications network.” (Ex. 1009 (Reiger) at ¶ 70.) NSTC explains the
importance of transmitting messages over as many networks as possible. (Ex.
1013 (NSTC) at 7.) To the extent that Patent Owner argues that cell broadcast
transmission is required by the claims, NSTC suggests the use of cell broadcast as
one network for transmitting messages to geographically defined areas. (Id. at 34.)
NSTC also discusses the use of TV, radio and cable networks for message
transmission. (Id.)
The Reiger system using the cell broadcast and other networks suggested in
NSTC would use the transmitting audience of the cell and other methods (such as
the transmission range of radio and TV) to target geographically defined
57
audiences. (Ex. 1005 (Surati Dec.) at ¶¶ 70-71.) Since the system in Reiger and
the methods of cell broadcast and other networks such as TV and radio disclosed in
NSTC comprise only proven technologies, a POSA would have had a reasonable
expectation that, by using the method of creating and verifying broadcast messages
taught by Reiger along with the transmission methods taught in NSTC, the
resulting combination would comprise a useful broadcasting system that receives
messages from a plurality of users and broadcasts messages via a plurality of
transmission media within a geographically defined area. (Ex. 1003 (Botterell
Dec.) at ¶ 66; Ex. 1005 (Surati Dec.) at ¶ 70-71.) See also Asyst Techs., 544 F.3d
at 1315, holding that a claimed system which merely substituted one known
element for another known element, used for the same purpose, is obvious.
Reiger teaches the receiving element of claim 17. Reiger describes a user
interface to receive a broadcast message, including “receiving over an input
interface” (see Ex. 1009 (Reiger) at ¶ 73 (“A user interface 117 is also included
with the communication server 111.” )); “a plurality of broadcast message requests,
each broadcast message request including a broadcast agent identification…” (see
id. at ¶ 70 (“[I]n an embodiment of the invention, a communications system 100 is
comprised of a communications server 111, one or more mobile clients 109, and
one or more stationary clients 105 and 107.”); id. ¶ 77 (“Each posting is comprised
of an identification tag that describes who has posted it.”)); “a geographically
58
defined broadcast target area” (see id. at ¶ 79 (“Each posting is also provided with
a “broadcast” descriptor, which identifies the posting’s geographical target
region(s).”)); “and a broadcast message” (see id. at ¶ 78 (“Postings are further
defined by an information component, which is the content of the posting. As with
ordinary email, this component could be just a simple textual message, or it could
include a reference to one or more Web pages containing graphics, audio, links,
etc.”)); “from one of a plurality of coupled broadcast agent message origination
systems” (see id. at ¶ 70 (“Where the Internet is used, stationary clients 105 and
107 and mobile clients 109 communicate to the communications server 111 via
Hypertext Transfer Protocol (HTTP) using standard Web browsers. Stationary
clients 105 and 107 can be for example, general purpose computers. Mobile
clients 109 can be for example handheld personal computers, Personal Data
Assistants, or the like.”)). (Ex. 1003 (Botterell Dec.) at ¶ 66; Ex. 1005 (Surati
Dec.) at ¶ 71.)
Reiger discloses storing geographically defined broadcast message
jurisdiction(s) for broadcast message originators, as required by element 3 of claim
17: “Administrators of the communications system 100 can restrict the nature of
posting created by any particular user by defining geographic regions into which
the user is either authorized or unauthorized to post. Authorized regions can be
assigned optional passwords and posting category restrictions that further narrow
59
the user’s posting privileges in those regions. These controls would, for example,
permit system administrators to grant specific privileges to a regional authority to
create posting of particular categories, e.g., Governmental/Traffic,
Governmental/Weather, to particular regions, while excluding all other users from
posting those categories to the regions.” (Id. at ¶ 81.) Further, “[t]he MASTER
server’s 221 database contains global system information, such as the identities
and addresses of the other servers, the master list of user names, passwords, and
email addresses, and so forth.” (Id. at ¶ 102; see also Ex. 1003 (Botterell Dec.) at ¶
66; Ex. 1005 (Surati Dec.) at ¶ 71.)
Reiger teaches the verifying element of claim 17, disclosing verifying an
authority of the broadcast agent, including an authority to send the broadcast
message to the geographically defined broadcast area by comparing the stored
geographic message jurisdiction for a broadcast agent: “Each entry in the
UserMasterIndex table contains the critical information enabling the user to log on
(log-on name and password), as well as the user’s system-wide unique email
address. When a user attempts to log on to the communications system 200, the
client tier 205 passes the log-on name and password that have been entered to the
system’s MASTER server 211, which is also an HTTP server. The MASTER
server 211 validates the information, and upon success, redirects the client tier to
the USER server 215 that hosts the user, who has now been identified.” (Ex. 1009
60
(Reiger) at ¶¶ 176-77.) Once the log-on and password have been validated, the
user is directed to a page which allows postings on pre-specified channels, which
are defined by the specific user profile.
Some channels are “restricted,” in that they are dedicated to particular uses
and may only be access by pre-authorized users. Restricted channels generally
have an associated broadcast region. (Id. at ¶ 157.) As an example, Reiger
provides that an emergency channel for a local police station is a restricted channel
for which a user must have authority to access. (Id.) By allowing only the local
police station to post on the restricted channel, Reiger provides a step by which the
region associated with a particular user is compared to the user for verification of
jurisdiction. (Ex. 1003 (Botterell Dec.) at ¶¶ 56, 66; Ex. 1005 (Surati Dec.) at ¶
71.) This step is controlled by the password of the user, which determines which
channels are available to the user. (Ex. 1003 (Botterell Dec.) at ¶¶ 56, 66; Ex.
1005 (Surati Dec.) at ¶ 71.)
The combined Reiger/NSTC system teaches the transmitting element of
claim 17. NSTC explains the importance of transmitting messages over as many
networks as possible, and gives examples of networks that are useful, including
TV, radio, cable and cell broadcast. (Ex. 1013 (NSTC) at 7, 34.) Using cell
broadcast as a network would effectuate transmission of the broadcast message to
all receivers within a cell. (Ex. 1013 (NSTC) at 7; Ex. 1003 (Botterell Dec.) at ¶
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61; Ex. 1005 (Surati Dec.) at ¶ 38.) NSTC also stresses the need to send messages
to narrowly targeted geographic audiences, and therefore the requirement of
“determining” the networks over which to send a message would have been
obvious: the messages would be sent only over geographically relevant networks
(e.g., geographically relevant cells for cell broadcast). (Ex. 1013 (NSTC) at 26;
Ex. 1003 (Botterell Dec.) at ¶ 67.) Therefore, element 5 (the transmitting element)
is obvious over the combination of Reiger and NTSC. (Ex. 1003 (Botterell Dec.)
at ¶¶ 66-67; Ex. 1005 (Surati Dec.) at ¶¶ 57, 70-71.)
Claim 23, which depends from and further limits claim 17, requires that the
broadcast message be transmitted over “two or more broadcast message
transmission systems selected from the group consisting of a wireless mobile
carrier network; . . . an internet provider;. . . a CATV network; a radio system; and
a television system.” As discussed above, NTSC discloses the use of cellular
carriers, radio and television communications systems, rendering claim 23 obvious.
As demonstrated above, Reiger and NTSC in combination teach all of the
elements of claims 17 and 23 and, therefore, these claims are obvious. (See also
Ex. 1003 (Botterell Dec.) at ¶¶ 66-67; Ex. 1005 (Surati Dec.) at ¶¶ 70-71.)
As discussed above with respect to Ground 1, Petitioner is unaware of any
secondary considerations that would suggest that claims 17 and 23 are non-
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obvious, but reserves the right to respond to any allegations of secondary
considerations submitted by Patent Owner.
XII. CONCLUSION
For the reasons set forth above, Petitioner respectfully submits that it has
established a reasonable likelihood of success with respect to the challenged claims
and requests that this petition be granted and claims 17 and 23 be cancelled.
Respectfully submitted,
Dated: April 6, 2017 /Mark J. Abate/ Mark J. Abate (Reg. No. 32,527) Calvin E. Wingfield (to seek pro hac vice admission) Sarah Fink (Reg. No. 64,886) GOODWIN PROCTER LLP 620 Eighth Avenue New York, NY 10018-1405 Tel. (212) 813-8800 Fax. (212) 355-3333 Counsel for Petitioner
63
CERTIFICATE OF WORD COUNT
The undersigned certifies that the attached Petition for Inter Partes Review
of U.S. Patent No. 9,136,954 contains 13,498 words (as calculated by the word
processing system used to prepare this Petition), excluding the parts of the Petition
exempted by 37 C.F.R. §42.24(a)(1).
Dated: April 6, 2017 /Mark J. Abate/
Mark J. Abate (Reg. No. 32,527) Calvin E. Wingfield (to seek pro hac vice admission) Sarah Fink (Reg. No. 64,886) GOODWIN PROCTER LLP 620 Eighth Avenue New York, NY 10018-1405 Tel. (212) 813-8800 Fax. (212) 355-3333 Counsel for Petitioner
CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, I certify that on this 6th day of
April, 2017, I served a copy of this PETITION FOR INTER PARTES REVIEW
and copies of all supporting materials and exhibits by Federal Express Next
Business Day Delivery on the following addresses for patent owner(s) and their
representatives:
EnvisionIT, LLC 17 Research Park Drive, Suite 200 St. Charles, MO 63304 EnvisionIT LLC 550 Club Drive, Suite 410 Montgomery, TX 77042 Polster Lieder Woodruff & Lucchesi, LC Attn: David L. Howard 12412 Powerscourt Drive, Suite 200 St. Louis, MO 63131 Moffit, Jim A. 1426 Country Lake Estates Drive Chesterfield, MO 63005 Langhofer Cell Alert, LLC 1625 North Waterfront Parkway, Suite 300 Wichita, KS 67206-6602 GLA New Ventures, LLC 17 Research Park, Suite 200 St. Charles, MO 63304 Steve Langhofer Investment Group 1625 North Waterfront Parkway, Suite 300 Wichita, KS 67206-6602
ii
Langhofer CellCast LLC 1625 North Waterfront Parkway, Suite 300 Wichita, KS 67206-6602
/Sarah Fink/ Sarah Fink (Reg. No. 64,886) GOODWIN PROCTER LLP 620 Eighth Avenue New York, NY 10018-1405