Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper 56
`Entered: May 7, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00199
`Patent 6,771,970 B1
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`
`Paper 56
`Entered: May 7, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00199
`Patent 6,771,970 B1
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2014-00199
`Patent 6,771,970 B1
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`I. INTRODUCTION
`A. Background
`Wavemarket, Inc. d/b/a Location Labs (“Petitioner”) filed a Petition1
`(Paper 6, “Pet.”) to institute an inter partes review of claims 1–19 of U.S.
`Patent No. 6,771,970 B1 (“the ’970 Patent”). LocatioNet Systems Ltd.
`(“Patent Owner”) timely filed a Preliminary Response. Paper 12. In a May
`9, 2014 Decision (Paper 18, “Dec.”), we instituted review of claim 18.
`Following institution, Patent Owner filed a Response (Paper 35, “PO
`Resp.”) and Petitioner filed a Reply (Paper 39, “Pet. Reply”). Patent Owner
`relies upon the Declaration of Narayan Mandayam Ph.D. (Ex. 2016, “Dr.
`Mandayam’s Declaration”) in support of its Response.
`Petitioner relies upon the Declaration of Scott Hotes Ph.D. (Ex. 1013)
`in support of its Petition and the Declaration of Craig Rosenberg Ph.D. (Ex.
`1020, “Dr. Rosenberg’s Declaration”) in support of its Reply.
`Patent Owner filed a Motion to Exclude certain of Petitioner’s
`evidence. Paper 43 (“PO Mot. Excl.”). Petitioner filed an Opposition
`(Paper 48, “Pet. Opp.”), and Patent Owner filed a Reply (Paper 51, “PO
`Reply Opp.”). Patent Owner also filed a Motion for Observations on the
`Cross Examination of Craig Rosenberg Ph.D. (Paper 44, “PO Mot. Obs.”)
`and Petitioner filed a Response to Patent Owner’s Observations (Paper 49,
`“Pet. Resp. Obs.”).
`
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`1 Throughout this Decision, we refer to the corrected Petition (Paper 6) filed
`on December 13, 2013.
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`Petitioner filed a Motion to Exclude certain of Patent Owner’s
`evidence. Paper 42. Patent Owner filed an Opposition (Paper 47), and
`Petitioner filed a Reply (Paper 50).
`We heard oral argument on February 10, 2015. Paper 55 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons that follow, Petitioner has shown by a preponderance of the
`evidence that claim 18 is unpatentable.
`
`B. Related Proceedings
`Petitioner indicates the ’970 Patent is at issue in the following actions
`(Pet. 2):
`(1) CallWave Communications, LLC v. AT&T Mobility, LLC, No.
`1:12-cv-01701-RGA (D. Del.);
`(2) CallWave Communications, LLC v. Sprint Nextel Corp, No. 1:12-
`cv-01702-RGA (D. Del.);
`(3) CallWave Communications, LLC v. T-Mobile USA Inc, No.1: 12-
`cv-01703-RGA (D. Del.);
`(4) CallWave Communications, LLC v. Verizon Communications Inc.,
`No. 1:12-cv-01704 (D. Del.); and
`(5) CallWave Communications, LLC v. AT&T Mobility LLC, No. 1:12-
`cv-01788 (D. Del.).
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`C. The ’970 Patent
`The ’970 Patent relates to a system and method for location tracking
`of mobile platforms. Ex. 1001, Abs., col. 2, ll. 2–28, col. 3, ll. 4–24.
`Figure 1 of the ’970 Patent, reproduced below, schematically depicts a
`location tracking system. Id. at col. 3, ll. 31–32.
`
`
`Figure 1 illustrates mobile platforms 21, 22, 23, and 24, and location
`tracking systems 11, 12, 13, and 14 that communicate with communication
`subsystem 3 of location determination system 1. Ex. 1001, col. 3, l. 44–col.
`4, l. 11. Location determination system 1 is linked to database 2 and map
`server 4 that accesses map database 5. Id. at col. 4, ll. 12–22. Location
`determination system 1 hosts website 50 on Internet 30. Id. at col. 4, ll. 23–
`28. A subscriber to location determination system 1, and equipped with
`computer 60 running an internet browser, logs on to website 50 and selects a
`mobile platform from among mobile platforms 21–24 for which the location
`is sought. Id. at col. 4, ll. 29–39. The request is passed from web site 50 to
`location determination system 1, which passes the request to communication
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`subsystem 3. Id. at col. 4, ll. 12–15, 39–45. Communication subsystem 3
`formats the request for transmission to a location tracking system 11–14, and
`transmits the request. Id. at col. 4, ll. 6–11, 46–48, col. 5, l. 51–col. 6, l. 2.
`Location tracking system 11–14 receives the request, determines the location
`of the requested mobile platform, and transmits the location information
`back to communication subsystem 3. Id. at col. 4, ll. 48–52, col. 6, ll. 2–11.
`Communication subsystem 3 associates the location information with the
`request and passes it to location determination system 1, which passes the
`location of the requested mobile platform 21–24 to map server 4. Id. at col.
`4, ll. 52–56. Map server 4, using a map engine, obtains a map of the area in
`which the requested mobile platform 21–24 is located, marks the position of
`the mobile platform on the map, and passes it to location determination
`system 1. Id. at col. 4, ll. 56–59. The map then is passed to the web browser
`running on subscriber’s computer 60. Id. at col. 4, ll. 60–61, col. 5, ll. 19–
`24.
`
`D. Claim 18
`Claim 18 is reproduced below (disputed limitations italicized):
`18. A system for location tracking of mobile platforms,
`each of which is equipped each with a tracking unit, each being
`adapted to determine the location of a respective mobile
`platform according to a property that is predetermined for each
`mobile platform; the system comprising:
`(a) a location server communicating through a user
`interface with at least one subscriber equipped with a browser;
`said communication having inputs that include at least the
`subscriber identity, the mobile platform identity and map
`information;
`(b) at least one mobile platform location system coupled
`to said location server for receiving the mobile platform identity
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`and map information that pertain to mobile platforms associated
`with the respective mobile platform location system; each one
`of said mobile platform location systems being associated with
`a map database and map engine for manipulating said map
`database;
`(c) at least one remote tracking service communicating
`with said respective mobile platform location system for
`receiving mobile platform identity and returning mobile
`platform location information;
`the at least one mobile platform location system being
`adapted to receive said mobile platform location information
`and access said map database for correlating map to said
`location information, so as to obtain correlated location
`information;
`said location server being adapted to receive the
`correlated location information and forward them to said
`browser.
`
`II. ANALYSIS
`A. Claim Construction
`We interpret claims using the “broadest reasonable construction in
`
`light of the specification of the patent in which [they] appear[].” 37 C.F.R.
`§ 42.100(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012). “[C]laim language should be read in light of the
`specification as it would be interpreted by one of ordinary skill in the art.”
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
`(quotations and citation omitted). “[T]he specification ‘is always highly
`relevant to the claim construction analysis. Usually, it is dispositive; it is the
`single best guide to the meaning of a disputed term.’” Phillips v. AWH
`Corp., 415 F.3d 1303, 1315 (en banc) (quoting Vitrionics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Extrinsic evidence, such as
`dictionaries and expert testimony, may be useful, but it is unlikely to result
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`in a reliable interpretation of patent claim scope unless considered in the
`context of the intrinsic evidence. Id. at 1319.
`For the purpose of our Decision instituting inter partes review we did
`
`not construe expressly any of the claim terms and phrases recited in claim
`18. See Dec. 6–7. In its Response, Patent Owner presents explicit
`constructions for “map database” and “map engine for manipulating said
`map database,” recited in claim 18. PO Resp. 10–11, 13.
`
`Map Database
`Patent Owner asserts, with supporting expert testimony, “the ordinary
`
`and customary meaning of map ‘database’ as understood by a person of
`ordinary skill in the art as well as a layperson is a collection of map data that
`is organized so that it can easily be accessed, searched, managed, and
`updated.” PO Resp. 10–11 (citing Ex. 2016 ¶ 28; Ex. 2017, 61; Ex. 2018,
`126). Patent Owner relies on the testimony of Dr. Narayan Mandayam,
`which provides two dictionary definitions to support the opinion regarding
`the ordinary and customary meaning of map database. Ex. 2016 ¶ 28 (citing
`Ex. 2017, 61; Ex. 2018, 126). The provided dictionaries define “database”
`as follows: (1) “[a]n organized collection of information that can be
`searched, retrieved, changed, and sorted using a collection of programs
`known as a database management system” (Ex. 2017, 61); and (2) “[a]
`collection of information organized in such a way that a computer program
`can quickly select desired pieces of data” (Ex. 2018, 126).
`
`Turning to the intrinsic evidence, the ’970 Patent Specification utilizes
`the term “map database” in the following contexts: (a) “maps stored in the
`database (5),” (b) “a map from said at least one map database,” (c) “[t]he
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`map database may include maps formatted as at least one of the following:
`Raster Map in various scales, vector maps and air photo,” (d) “[a] map
`database (5) in formats such as Raster, Vector, Topographic or aerial
`photographs;” and (e) “accessing a map database (5).” Ex. 1001, col. 2, ll.
`32, 46–48, col. 4, ll. 15–17, col. 5, ll. 3–6.
`
`We are not persuaded by Patent Owner’s argument that its proposed
`construction of “map database” is consistent with the ’970 Patent
`Specification. PO Resp. 11 (citing Ex. 1001, col. 2, ll. 46–48, col. 4, ll. 15–
`22, col. 5, ll. 45–50). Patent Owner’s proposed construction is narrower
`than the ’970 Patent’s broad disclosure of a map database as collection of
`maps that can be accessed. In addition, Dr. Mandayam’s opinion is not
`supported fully by the provided dictionary definitions for database. See 37
`C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying
`facts or data on which the opinion is based is entitled to little or no
`weight.”).
`
`We give more weight to the intrinsic evidence than we give to Patent
`Owner’s extrinsic evidence, as the ’970 Patent Specification serves as the
`best guide regarding the construction of “map database.” Accordingly, the
`broadest reasonable construction in light of the ’970 Patent Specification for
`“map database” is an organized collection of map data that can be accessed.
`
`Map Engine for Manipulating Said Map Database
`Patent Owner contends, with supporting expert testimony, “the
`
`ordinary and customary meaning of the term map database ‘engine’ as
`understood by a person of ordinary skill in the art and a layperson is a
`program or module for accessing, searching, managing, and updating the
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`map database.” PO Resp. 13–14 (citing Ex. 2016 ¶ 32; Ex. 2019, 208). For
`clarification, claim 18 recites “map engine for manipulating said map
`database” Ex. 1001, col. 8, l.61, not “map database engine,” as asserted by
`Patent Owner. In other words, Patent Owner contends a “map engine”
`should be construed as a program or module, and the phrase “for
`manipulating said map database” should be construed as “for accessing,
`searching, managing, and updating the map database.” Id. Patent Owner’s
`expert Dr. Narayan Mandayam provides a dictionary definition to support
`the opinion regarding the ordinary and customary meaning of map engine.
`Ex. 2016 ¶ 32 (citing Ex. 2019, 208). The provided dictionary defines
`“engine” as “[t]he portion of the program that determines how the program
`manages and manipulates data. Another name for processor.” Ex. 2019,
`208.
`Petitioner counters Patent Owner’s proposed construction and points
`
`out that the ’970 Patent Specification recites the term “map engine” in two
`instances, and does not include the term “manipulating.” Pet. Reply 9
`(citing Ex. 1001 col. 4, ll. 5–17, 55–58); see Ex. 1001. The ’970 Patent
`Specification discloses the interaction of the map engine and map database
`in the following contexts: (1) “a map server (4) operating a map engine for
`accessing a map database (5),” and (2) “the map server (4) which obtains
`a map of the area in which the vehicle (22) is located using the map
`engine.” Ex. 1001, col. 4, ll. 15–17, 55–59 (emphases added). Petitioner
`argues that based on the ’970 Patent Specification disclosure, “it must be
`presumed that accessing and/or obtaining a map from a map database reads
`on the claimed ‘manipulating’ of the map database.” Pet. Reply 9.
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`The ’970 Patent relies on Provisional Patent Application 60/157,643
`
`(Ex. 1002, “’643 Application”) to establish domestic priority. The ’643
`Application includes language nearly identical to the language recited in
`claim 18 (compare Ex. 1001, claim 18, with Ex. 1002, 2, claim 1), and
`provides additional illumination regarding the disclosed interaction of the
`map engine and map database. Specifically, the ’643 Application discloses
`the interaction of the map engine and map database in the following
`contexts: (1) “[e]ach of the specified Company Devices ((41) to (44))[(i.e.,
`mobile platform location systems)] is associated with a map database (not
`shown) and a known per se map engine for accessing the map
`database . . . ;” and (2) “[t]he latter [(i.e., unit 41)] correlates the so received
`location data with the desired map (as defined in input (63)) as extracted
`from the map database using its integrated map engine.” Ex. 1002, 4, ll.
`1–3, 5, ll. 4–6 (emphases added). The disclosure in the ’643 Application of
`the map engine accessing the map database, and extracting a map from the
`map database, is consistent with, and complementary to, the ’970 Patent
`Specification disclosure of the map engine accessing the map database, and
`obtaining a map from the map database.
`
`We are not persuaded that Patent Owner’s proposed construction for
`“map engine for manipulating said map database” is consistent with the ’970
`Patent Specification and the express language of claim 18. PO Resp. 14
`(citing Ex. 1001, col. 4, ll. 16–17, 55–58, claim 18; Ex. 2016 ¶ 32); see also
`Tr. 16–18 (asserting the ’970 Patent Specification discloses the step of
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`correlating is performed using the map engine).2 Patent Owner’s proposed
`construction is narrower than the ’970 Patent and ’643 Application
`disclosures of the map engine accessing the map database, or obtaining or
`extracting a map from the map database. Additionally, Dr. Mandayam’s
`opinion is not supported fully by the provided dictionary definitions for the
`term “engine.” See 37 C.F.R. § 42.65(a).
`
`We give more weight to the intrinsic evidence than we give to Patent
`Owner’s extrinsic evidence, as the ’970 Patent Specification serves as the
`best guide regarding the construction of “map engine for manipulating said
`map database.” Therefore, the broadest reasonable construction in light of
`the ’970 Patent Specification for “map engine for manipulating said map
`database” is an element or component for accessing the map database or
`obtaining or extracting map data from the map database.
`
`B. Asserted Ground of Unpatentability
`We instituted review of claim 18 as unpatentable under 35 U.S.C.
`
`§ 102(e) as anticipated by Elliot.3 Dec. 15–17, 30.
`
`Elliot
`Elliot describes a wireless communications system which tracks the
`current and historical locations of a device worn or carried by a person, and
`
`
`2 The ’970 Patent discloses the map server (4) is capable of correlating
`between maps stored in the database (5) and the received positioning
`information. Ex. 1001, col 4, ll. 17–20. Similarly, claim 18 recites the
`“mobile platform location system being adapted . . . for correlating map to
`said location information so as to obtain correlated location information.”
`3 U.S. Patent No. 6,243,039 B1 (Ex. 1003).
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`provides widely available access to the data referencing these locations. Ex.
`1003, col. 2, ll. 29–35.
`Figure 1 of Elliot, reproduced below, depicts the network architecture
`of the system. Ex. 1003, col. 4, ll. 18–19.
`
`
`Figure 1 illustrates device 12 worn or carried by a child, GPS (Global
`Positioning System) satellite 14, ground based position systems 15, central
`receiver-transmitter 16, and central control system 20. Id. at col. 4, l. 52–
`col. 5, l. 46. Device 12 receives broadcast signals from each of three GPS
`satellites 14, triangulates the three signals, and determines the coordinates of
`the current location of device 12. Id. at col. 4, ll. 55–58. “Similarly, the
`signals may be received from [] ground based position system 15.” Id. at
`col. 4, ll. 59–60. Device 12 encodes the location coordinates into a data
`package and sends the data to central receiver-transmitter 16, which may be
`any type of cellular transmission system. Id. at col. 4, l. 66–col. 5, l. 5. The
`data signal transmitted by device 12 includes the current GPS coordinates,
`the current time, and the device identification code of transmitting device 12.
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`Id. at col. 5, ll. 32–35. Central receiver-transmitter 16 receives the
`transmission from device 12 and forwards the data signal to centralized
`control system 20. Id. at col. 5, ll. 41–43.
`
`Figure 3 of Elliot, reproduced below, depicts the process architecture
`of central control system 20. Ex. 1003, col. 4, ll. 22–23, col. 6, ll. 18–19.
`
`
`The central control system of Figure 3 includes GPS/device information
`database 26, translation process 28, translated record database 30, and web
`server 34. Id. at col. 6, ll. 31–65, col. 7, ll. 1–13. Central control system 20
`receives data from device 12 via central receiver-transmitter 16, decodes the
`data from the transmission message, and stores the data in GPS/device
`information database 26. Id. at col. 6, ll. 22–24, 31–32, 35–36. The data
`include the current GPS coordinates of device 12, the current time stamp,
`and device identification code. Id. at col. 6, ll. 32–34. Translation process
`28 translates the GPS coordinates to a commonly recognized location
`reference, such as graphical maps. Id. at col. 6, ll. 37–38, 45–52, col. 2, ll.
`11–13. The translated data signals are stored as records in translated record
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`database 30. Id. at col. 6, ll. 64–65. Web server 34 functions as a web
`interface for central control system 20 to enable web access to central
`control system 20. Id. at col. 7, ll. 1–5. Web server 34 provides the
`subscriber parent with the location data stored in translated record database
`30 by transmitting a graphical map display embedded in a web page by
`incorporating a graphic source file for the map into an HTML page as a
`graphics file “image” (i.e., map source file, graphics image source file, GIF),
`and including the current GPS coordinates of device 12 depicted on the map
`with a distinguishing mark “X.” Id. at col. 6, ll. 47–50, col. 7, ll. 6–13, col.
`9, ll. 12–42. Maps of non-local areas are also available. Id. at col. 9, l. 10;
`see also id. at col. 3, ll. 2–4 (web server 34 with its associated files provides
`graphical maps).
`
`Claim 18
`Patent Owner does not dispute Petitioner’s assertions that Elliot
`
`describes the majority of the subject matter recited in claim 18. See PO
`Resp. 1–16; Pet. 30–33. Patent Owner’s arguments instead focus on the
`following limitations of claim 18: “each one of said mobile platform
`location systems being associated with a map database and map engine for
`manipulating said map database.” PO Resp. 1–3, 8–16. Petitioner asserts
`Elliot’s web server 34 functions as a web interface for central control system
`20, and the web server 34 with its associated files provides graphical maps
`capable of showing the current and historical locations of device 12, thus,
`Elliot describes the disputed limitations of claim 18. Pet. 31 (quoting Ex.
`1003, col. 3, ll. 2–4, col. 7, ll. 1–7).
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`Relying on its proposed construction for “map database,” discussed
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`above in Section II.A., Patent Owner contends, with supporting expert
`testimony, Elliot’s web server does not describe a map database because it
`“fails to describe any data organization, management or functionality
`required for a database.” PO Resp. 10–11 (citing Ex. 2016 ¶¶ 26–28).
`Patent Owner also asserts Elliot’s disclosure of a web server that “provides”
`graphical maps does not describe the source of the graphical maps. Id. at
`11–12 (citing Ex. 2016 ¶ 29).
`
`In response to Patent Owner’s arguments, Petitioner contends Patent
`Owner ignores Elliot’s disclosure of not only a web server but the disclosure
`of a collection of graphical map files. Pet. Reply 3. Petitioner asserts Patent
`Owner’s expert Dr. Mandayam acknowledges that Elliot discloses a
`collection of graphical map files. Id. (citing Ex. 1019, 40, l. 18–41, l. 3).
`Petitioner argues Elliot is explicit that “graphical maps” or a “graphical
`display of a map” is a specific type of what Elliot refers generally to as a
`“location reference,” and “[t]he ‘collection’ of location references (i.e.,
`maps) is explicitly in the form of a database.” Id. at 4–5 (citing Ex. 1001,
`claim 10, col. 2, ll. 11–13, col. 5, ll. 52–57, col. 6, ll. 36–37, 64–67, col. 7,
`ll. 6–16, Fig. 3). With supporting expert testimony, Petitioner makes the
`following additional contentions: (1) “one of ordinary skill in the art would
`understand that [Elliot’s] ‘associated files’ that provide[] the . . . graphical
`maps to [web] server [34] constitute what Elliot expressly discloses as a map
`database (e.g. 30, Fig. 3);” and (2) Elliot “makes clear that the files
`contained in the database are organized in a way that makes them
`accessible.” Id. at 5 (citing Ex. 1020 ¶¶ 12–26); see also Tr. 34, l. 15 (“Our
`position is that database 30 [of Elliot] is the map database.”).
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`Based upon our review of the arguments and supporting evidence
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`presented by each of the parties, we are persuaded that Petitioner has
`demonstrated by a preponderance of the evidence that Elliot’s database 30,
`which includes graphical maps that can be accessed by web server 34,
`describes the “map database” recited in claim 18 and constitutes an
`organized collection of map data that can be accessed.
`Relying on its proposed construction for “map engine for
`
`manipulating said map database,” discussed above in Section II.A., Patent
`Owner contends Elliot’s description suggesting commercially available
`software programs for producing and manipulating graphics images does not
`disclose a “map engine for manipulating said map database.” PO Resp. 13–
`15 (citing Ex. 2016 ¶¶ 33–34).
`In response, Petitioner contends Patent Owner’s arguments
`
`mischaracterize the Petition and Decision instituting inter partes review.
`Pet. Reply 8. Petitioner clarifies that it is Elliot’s web server 34 and the
`interaction of the web server 34 and the database 30 which describes the
`“map engine for manipulating said map database.” Id. at 10–11 (citing
`Ex. 1003, col. 3, ll. 2–4, col. 7, ll. 1–13). Specifically, Petitioner directs
`attention to Elliot’s description of web server 34 functioning as a web
`interface for central control system 20 to enable web access to the central
`control system, and web server 34 providing a subscriber with location data
`stored in the translated records database 30 in a graphical map display
`format. Id. at 11 (citing Ex. 1003, col. 7, ll. 1–13). Petitioner asserts, with
`supporting expert testimony, that based on Elliot’s description, it is clear that
`Elliot’s web server 34 accesses and obtains graphical map files from the map
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`database 30, and necessarily constitutes a “map engine for manipulating said
`map database.” Id. (citing Ex. 1020 ¶¶ 32–34).
`
`Upon consideration of arguments and supporting evidence of each of
`the parties, we are persuaded by a preponderance of the evidence that
`Elliot’s web server 34 that accesses graphical maps from database 30
`describes the “map engine for manipulating said map database,” recited in
`claim 18 and broadly constitutes an element or component for accessing the
`map database or obtaining or extracting map data from the map database.
`
`We are not persuaded by Patent Owner’s conclusory statement that
`“Elliot fails to disclose that each one of the mobile platform locations
`systems is ‘associated with’ a corresponding map database and map engine,
`as required by claim 18.” PO Resp. 1–2; see id. 8, 9–10 (citing Ex. 2016 ¶
`26), 15–16. Patent Owner relies largely on arguments directed to the “map
`database,” and “map engine for manipulating said map database,” and does
`not meaningfully explain why Elliot fails to describe “each one of said
`mobile platform location systems being associated with a map database and
`map engine for manipulating said map database,” recited in claim 18. Patent
`Owner’s arguments also are not commensurate in scope with the claim
`limitations because claim 18 does not require a corresponding map database
`and map engine for each mobile platform location system. Compare PO
`Resp. 1–2, 8, 9–10, with Ex 1001, claim 18.
`
`Patent Owner does not attempt to distinguish any other features of
`claim 18 over the system disclosed by Elliot. The record contains the same
`arguments and evidence regarding the merits of the alleged anticipation by
`Elliot of the remaining elements of claim 18 as it did at the time of our
`Decision to institute inter partes review. Accordingly, the preponderance of
`
`17
`
`
`
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`IPR2014-00199
`Patent 6,771,970 B1
`
`the evidence of record supports a finding that Petitioner has set forth how the
`remaining limitations of claim 18 are described by Elliot. See Pet. 30–33.
`
`Based on our review of the record before us, we are persuaded that
`Petitioner has shown by a preponderance of the evidence that Elliot
`anticipates claim 18.
`
`C. Petitioner’s Motion to Exclude Evidence
`Petitioner moves to exclude certain portions of Dr. Mandayam’s
`
`Declaration (Ex. 2016), and Exhibits 2017 through 2019 in their entirety.
`Paper 42. We do not rely on the aforementioned Exhibits in reaching our
`Decision. Accordingly, we dismiss Petitioner’s Motion to Exclude Evidence
`as moot.
`
`D. Patent Owner’s Motion to Exclude Evidence
`Patent Owner moves to exclude Dr. Rosenberg’s Declaration (Ex.
`
`1020) in its entirety as inadmissible under Federal Rules of Evidence
`(“FRE”) 402, 403, 702, 703 and 37 C.F.R. § 42.65. PO Mot. Exclude 1.
`Patent Owner asserts Dr. Rosenberg’s Declaration is inadmissible for the
`following reasons:
`because it fails to assist a trier of fact to understand or
`determine a fact in issue, is based upon insufficient facts or
`information, is not the product of reliable principles and
`methods, does not reliably apply the principles and methods to
`the facts of this case, and/or its probative value is substantially
`outweighed by the risk of prejudice and/or confusion.
`Id. (citing FRE 402, 403, 702, 703).
`
`Patent Owner argues that Exhibit 1020 is inadmissible under FRE 702
`because Dr. Rosenberg is not qualified as a person of ordinary skill in the
`art. PO Mot. Excl. 2–5 (citing Sundance, Inc. v. DeMonte Fabricating Ltd,
`
`18
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`IPR2014-00199
`Patent 6,771,970 B1
`
`550 F3d 1356. 1358 (Fed. Cir. 2008); see PO Reply to Opp. 1–3 (citing
`Morpho Detection, Inc. v. Smiths Detection, Inc., No. 2:11-cv-498, 2012 WL
`6004085, *1–2 (E.D. Va. Nov. 30, 2012)). Specifically, Patent Owner
`argues that Dr. Rosenberg’s degrees in Industrial Engineering and Human
`Factors and completion of core engineering coursework do not meet the
`qualifications of a person of ordinary skill in the art set forth by either Patent
`Owner’s expert or Petitioner’s expert. PO Mot. Excl. 2–4 (citing Ex. 1020,
`3; Ex. 1013, 6; Ex. 2016, 5; Ex. 2021, 1). Patent Owner also argues that Dr.
`Rosenberg’s work experience in “user interface design and software
`architecture” does not constitute work experience in “client-server systems,
`networking technologies and applications, data translations systems, and
`wireless and Internet communication protocol.” PO Mot. Excl. 4 (citing Ex.
`1020, 2–5; Ex. 1013, 6).
`
`Federal Rule of Evidence 702 permits a witness qualified as an expert
`by knowledge, skill, experience, training, or education to testify in the form
`of an opinion if a) the expert’s knowledge will help the trier of fact to
`understand the evidence or to determine a fact in issue, (b) the testimony is
`based upon sufficient facts or data, (c) the testimony is the product of
`reliable principles and methods, and (d) the witness has applied the
`principles and methods reliably to the facts of the case.
`
`Patent Owner does not direct us to binding authority sufficient to
`support its argument that in order for expert testimony to be admissible, the
`expert must be a person of ordinary skill in the art. We agree that “there is
`no requirement imposed by the FRE that an expert’s qualifications perfectly
`match the field of the patent at issue.” Pet. Opp. 6 (citing SEB S.A. v.
`Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)); see also
`
`19
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`
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`IPR2014-00199
`Patent 6,771,970 B1
`
`Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed.
`Cir. 2011) (non-precedential) (upholding district court’s admission of
`testimony of an expert who “had experience relevant to the field of the
`invention,” despite admission that he was not a person of ordinary skill in
`the art). We also are persuaded by Petitioner’s arguments that Dr.
`Rosenberg’s experience is adequate to establish his technical expertise. Pet.
`Opp. 7 (citing Ex. 1020 ¶¶ 5, 6, 8; Ex. 1020, 23). In particular, and germane
`to the ’970 Patent, we note Dr. Rosenberg has over four years of experience
`serving as the founder and CEO of a technology company WhereWuz which
`focuses on location tracking applications for GPS enabled smartphones. See
`Pet. Opp. 7; Ex. 1020 ¶ 8.
`
`Patent Owner also contends that Dr. Rosenberg’s Declaration is
`inadmissible under FRE 402, 403, 702, and 703 because Dr. Rosenberg’s
`opinions: (1) are conclusory, (2) fail to apply any relevant and reliable
`analysis to the facts of the case, (3) do not disclose the underlying facts in
`many instances, (4) are not a product of reliable principles and methods
`applied to the facts of this case; and (5) lack any probative value. PO Mot.
`Excl. 5–6. Patent Owner asserts Dr. Rosenberg’s opinion is not a product of
`reliable principles and methods because Dr. Rosenberg fails to identify
`definitions for “database,” “manipulating,” or “map engine for manipulating
`said map database,” and does not explain what a person of ordinary skill in
`the art would understand the claim terms to mean in the relevant context.
`Id.; see PO Reply Opp. 3–5. Patent Owner also contends Dr. Rosenberg’s
`Declaration lacks any probative value because Dr. Rosenberg lacks the
`qualifications of a person of ordinary skill in the art, and has failed to apply
`any relevant and reliable analysis to the facts of the case. PO Mot. Excl. 6.
`
`20
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`IPR2014-00199
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`Patent Owner’s arguments addressing Dr. Rosenberg’s testimony in
`
`this regard goes to the weight to be given to Dr. Rosenberg’s testi
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