`U.S. Patent 6,771,970
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
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`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`___________________
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`___________________
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
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`
`
`
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`PATENT OWNER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
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`IPR2014-00199
`U.S. Patent 6,771,970
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`Page(s)
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................... 1
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 2
`II.
`III. THE RELIEF REQUESTED SHOULD BE GRANTED .............................. 2
`The Board Misapprehended or Overlooked The Intrinsic
`A.
`Evidence For Construing The Claimed “Map Database” .................... 2
`The Board Misapprehended or Overlooked The Intrinsic
`Evidence For Construing The Claimed “Map Engine For
`Manipulating Said Map Database” ...................................................... 4
`The Board Misapprehended or Overlooked The Legal Standard
`For Admissible Expert Testimony Regarding Invalidity ..................... 8
`IV. CONCLUSION ............................................................................................. 12
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`B.
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`C.
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`TABLE OF AUTHORITIES
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`CASES
`Morpho Detection, Inc. v. Smiths Detection, Inc.,
`No. 211cv498, 2012 U.S. Dist. LEXIS 170561
`(E.D. Va. Nov. 30, 2012) ............................................................................ 8, 9, 10
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`Page(s)
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`Mytee Prods. v. Harris Research, Inc.,
`439 F. App’x 882 (Fed. Cir. 2011) ....................................................................... 9
`
`SEB S.A. v. Montgomery Ward & Co.,
`594 F.3d 1360 (Fed. Cir. 2010) ............................................................................ 9
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`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ...................................................................... 8, 10
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`FRE 702 ................................................................................................................... 10
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`INTRODUCTION
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`I.
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`LocatioNet Systems, Ltd. (“Patent Owner”) respectfully requests rehearing
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`under 37 C.F.R. § 42.71(d) of the Patent Trial and Appeal Board’s (“Board’s”)
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`May 7, 2015 Final Written Decision (Paper 56; “Final Decision”) as to claim 18 of
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`United States Patent No. 6,771,970 (“the ’970 Patent”; Ex. 1001). This request for
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`rehearing is filed within 30 days of the entry of final decision.
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`In its Final Decision, the Board found claim 18 of the ’970 Patent
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`unpatentable on the ground of anticipation over Elliot (Ex. 1003). In so finding,
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`the Board misapprehended or overlooked the intrinsic evidence supporting the
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`proper construction for the claim terms “map database” and “map engine for
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`manipulating said map database.” Moreover, the Board misapprehended or
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`overlooked the evidentiary standard for admissible expert testimony regarding
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`issues of invalidity, the substance and disclosure of the prior art, or how a person
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`of ordinary skill in the art would understand the prior art under the Federal Rules
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`of Evidence and well-established case law. Petitioner relied solely on the
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`inadmissible testimony of its declarant, Dr. Rosenberg, to support its attorney
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`arguments; therefore, Petitioner failed to carry its burden to prove that the
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`teachings of Elliot anticipate claim 18. Accordingly, Patent Owner respectfully
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`requests that the Board revisit the arguments tendered by both Petitioner and Patent
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`Owner, and conclude that claim 18 is not anticipated by Elliot.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Patent Owner respectfully requests that the Board reconsider its Final
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`II.
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`Decision and hold that Petitioner has failed to establish that claim 18 of the ’970
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`Patent is unpatentable.
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`III. THE RELIEF REQUESTED SHOULD BE GRANTED
`A. The Board Misapprehended or Overlooked The Intrinsic
`Evidence For Construing The Claimed “Map Database”
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`The Final Decision states:
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`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 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. ll. 3-
`6.
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`See Final Decision at 7-8. It appears that the Final Decision focused on select
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`passages from the ’970 Patent Specification describing what is contained in a “map
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`database” rather than what a “map database” is or what a “map database” does.
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`Based on this evidence, the Board found that “the broadest reasonable construction
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`in light of the ’970 Patent Specification for ‘map database’ is an organized
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`collection of map data that can be accessed.” Id. at 8. However, the Final
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`Decision misapprehended or overlooked copious intrinsic evidence that renders the
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`Board’s construction of “map database” overly broad and unreasonable under the
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`pertinent legal standard.
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`Claim 18 requires, among other things, that: “each one of said mobile
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`platform location systems being associated with a map database and map engine
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`for manipulating said map database.” See Ex. 1001 at 8:59-61. The Final
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`Decision misapprehended or overlooked the ’970 Patent’s disclosure of numerous
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`functions performed using the claimed “map database,” including supplying “street
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`names derived from map databases” (Ex. 1001 at 5:45-50), “correlating between
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`maps stored in the database (5)” (id. at 4:15-20), “the step of correlating the
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`location of each remote platform with a map database” (id. at 3:21-25), “access
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`said map database for correlating map to said location information, so as to
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`obtain correlated location information” (id. at 9:1-3). Paper 35 (PO Response) at
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`10-11; Paper 44 (PO’s Motion for Observations Re Cross-Exam) at 11-13; see also
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`Paper 55 (Hearing Tr.) at 14:8-24, 19:14-19.
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`Indeed, these functions of the claimed map database, i.e., deriving street
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`names from map databases, correlating between maps stored in the map database,
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`correlating the location of each remote platform with a map database, and
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`accessing the map database for correlating the map to location information, are
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`what define the claimed “map database.” Id. By broadly defining the claimed
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`“map database” as “an organized collection of map data that can be accessed”
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`without regard to the expressly described “database” functionality, any storage
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`device containing map data would constitute the claimed “map database.” See
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`Paper 55 at 14:1-4. To be sure, the ability to access map data does not define the
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`claimed “map database.” The extensive intrinsic evidence describing the
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`functionality of the “map database”—overlooked by the Final Decision—
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`demonstrates that the Board’s construction is overly broad and unreasonable.
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`Thus, under a proper claim construction based on the entire intrinsic record,
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`Petitioner has failed to show that claim 18 is unpatentable; therefore Patent Owner
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`respectfully requests that Board’s Final Decision be reversed.
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`B.
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`The Board Misapprehended or Overlooked The Intrinsic
`Evidence For Construing The Claimed “Map Engine For
`Manipulating Said Map Database”
`Claim 18 also requires a “map engine for manipulating said map database.”
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`Citing to the provisional application of the ’970 Patent, the Final Decision states:
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`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
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`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.”
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`Final Decision at 10 (emphasis in original). Based on this disclosure, the Final
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`Decision concludes: “The disclosure in the ’643 Application of the map engine
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`accessing the map database, and extracting a map from the map database, is
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`consistent with, and complementary to, the ’970 Patent Specification disclosure of
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`the map engine accessing the map database, and obtaining a map from the map
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`database.” Id. But this excerpted disclosure from the ’643 Application does not
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`support and is in fact contrary to the Board’s construction because it
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`misapprehends or overlooks the described functionality of the “map engine.” Final
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`Decision at 10-11 and n.2. When viewed in its full context, the ’643 Application
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`explains that the “integrated map engine” operating on the Company Device (41) is
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`not only used to extract a map from the map database, but is also used to correlate
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`the location data with the desired map stored in the map database. Id.
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`First, the ’643 Application states that each of the Company Devices (41) to
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`(44) is capable of correlating between maps and positioning information: “Each of
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`the specified Company Devices ((41) to (44)) is associated with a map database
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`(not shown) and a known per se map engine for accessing the map database and is
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`capable of correlating between maps and the positioning information received
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`from the vehicle’s tracking unit...” Ex. 1002 at p. 4, lines 1-4 (emphasis added). It
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`further discloses that: “The latter [i.e., Company Device (41)] correlates the so
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`received location data with the desired map (as defined in input (63)) as extracted
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`from the map database using its integrated map engine. The location data
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`incorporated in the map is forwarded through channel (72) to ILS module (46).”
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`Ex. 1002 at p. 5, lines 4-7 (emphasis added); Final Decision at 10. It is clear that
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`the verb of the sentence (i.e., correlates) is performed by the Company Device (41)
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`using its [Company Device (41)’s] integrated map engine. Id. Indeed, the ’643
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`Application explains that the Company Device (41) operates an integrated map
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`engine that it uses to correlate the location data with the desired map. Id. Thus,
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`there can be no dispute that the “map engine” is used to “correlate” the location
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`data with the desired map. This teaching is consistent with the ’970 Patent
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`Specification and the express language of claim 18.
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`Second, the ’970 Patent Specification describes an embodiment where the
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`“location determination system (1) is also linked to a map server (4) operating a
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`map engine for accessing a map database (5). The map server (4) is capable of
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`correlating between maps stored in the database (5) and positioning information
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`received from the respective location tracking systems (11-14).” Ex. 1001 at 4:15-
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`20 (emphasis added); Paper 35 at 4 and 7-8; Paper 44 at 11-13; Final Decision at
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`10. In this embodiment, the map server (4)—as opposed to the Company Device
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`(41) described in the ’643 Application—operates the map engine that it uses to
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`correlate between maps stored in the map database and positioning information
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`received from the location tracking systems. Id.
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`Third, the language of claim 18 is likewise consistent with the disclosure in
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`the ’643 Application and the ’970 Patent Specification. Claim 18 requires “each
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`one of said mobile platform location systems being associated with a map database
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`and map engine for manipulating said map database.” Ex. 1001 at 8:59-61,
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`claim 18; Paper 35 at 8-9, 13-14. It further requires that: [t]he at least one mobile
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`platform location system being adapted to receive said mobile platform location
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`information and access said map database for correlating map to said location
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`information, so as to obtain correlated location information…” Ex. 1001 at
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`8:66-9:3; Paper 35 at 13-14; Paper 44 at 11-13. It is also clear from the plain
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`language of claim 18 that the claimed mobile platform location system is
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`associated with a “map engine for manipulating said map database” to access the
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`map database for correlating a map with location information to obtain correlated
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`location information. Id. As such, based on the intrinsic evidence, the claimed
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`“map engine for manipulating said map database” must require more
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`functionality (e.g., correlating a map with location information) than merely
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`accessing a map database or obtaining a map from the map database.
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`Thus, the Board’s construction of “map engine for manipulating said map
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`database” as an element or component for accessing the map database or obtaining
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`or extracting map data from the map database misapprehends or overlooks the
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`intrinsic evidence set forth in the ’643 Application, the ’970 Patent Specification,
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`and the language of claim 18 itself; and thus, is overbroad and unreasonable.
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`C. The Board Misapprehended or Overlooked The Legal Standard
`For Admissible Expert Testimony Regarding Invalidity
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`The Final Decision states:
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`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.
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`Final Decision at 19. However, under the Federal Rules of Evidence and Federal
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`Circuit law, a declarant who is not qualified as a person of ordinary skill in the art
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`cannot testify as to issues of invalidity, the substance and disclosure of the prior
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`art, or how a person of ordinary skill in the art would understand the prior art.
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`The Board misapprehended or overlooked the case law cited in Patent
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`Owner’s Motion to Exclude, specifically Sundance, Inc. v. DeMonte Fabricating
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`Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008) (“With regard to invalidity, for
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`example, a witness not qualified in the pertinent art may not testify as an expert as
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`to anticipation, or any underlying questions, such as the nature of the claimed
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`invention, what a prior art reference discloses, or whether the asserted claims read
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`on the prior art reference.”) (emphasis added) and Morpho Detection, Inc. v.
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`Smiths Detection, Inc., No. 211cv498, 2012 U.S. Dist. LEXIS 170561, at *5-7
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`(E.D. Va. Nov. 30, 2012) (citing Sundance, 550 F.3d at 1363) (granting motion to
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`exclude testimony of expert that did not meet the requirements set forth in the
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`definition of a person of ordinary skill in the art on the issues of invalidity, the
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`substance and disclosure of the prior art, and how a person of ordinary skill in the
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`art would understand the prior art). Paper 43 (PO’s Motion to Exclude) at 2-5;
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`Paper 51 (PO’s Reply Re Motion to Exclude) at 1-2; Paper 55 at 29:3-30-14.
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`The case law cited in the Final Decision is inapposite. In SEB S.A. v.
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`Montgomery Ward & Co., 594 F.3d 1360 (Fed. Cir. 2010), the opinion testimony
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`offered did not relate to any issue of invalidity or the prior art. Final Decision at
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`19. And, in Mytee Prods. v. Harris Research, Inc., 439 F. App’x 882, 887 (Fed.
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`Cir. 2011) (non-precedential), the level of ordinary skill in the art was proffered to
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`be that of “an ordinary layman with average intelligence.” Id. at 20. Thus, the law
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`is clear: only a witness qualified as a person of ordinary skill in the art can testify
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`as to anticipation, the nature of the claimed invention, what a prior art reference
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`discloses, or whether the asserted claim reads on the prior art reference. Id.
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`Even though Petitioner provided no evidence to demonstrate how Dr.
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`Rosenberg qualifies as a person of ordinary skill in the art under any definition—
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`including Petitioner’s own definition, the Final Decision states: “We are also
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`persuaded by Petitioner’s arguments that Dr. Rosenberg’s experience is adequate
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`to establish his technical expertise.” Final Decision at 20. The Board’s finding is
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`erroneous and misapprehends or overlooks the law. Some level of technical
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`expertise that can qualify a declarant as an expert in technical subject matter under
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`FRE 702 does not qualify him to proffer opinions regarding invalidity, including
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`the substance and disclosure of the prior art, or how a person of ordinary skill in
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`the art would understand the prior art. See Sundance 550 F.3d at 1364; Morpho
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`Detection, 2012 U.S. Dist. LEXIS 170561, at *6-7 (holding that an expert that is
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`not qualified as one of ordinary skill in the art cannot testify with respect to
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`invalidity, but may testify “generally as an expert in the science of adsorption and
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`adsorption processes”); Paper 51 at 2-3; Paper 55 at 29:3-30:14.
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`The Final Decision’s reference to Dr. Rosenberg’s work experience relating
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`to “location tracking applications” does not constitute the requisite experience of
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`one of ordinary skill in the art in the field of the ‘970 Patent. Final Decision at 20.
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`Petitioner proffered a definition of a person having ordinary skill in the art in
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`Exhibit 1013 – a declaration submitted by Petitioner’s first expert, Dr. Hotes: “In
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`the field of the alleged invention of the ‘970 Patent, a person of ordinary skill in
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`the art has a bachelor of science degree in computer science, electrical engineering,
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`physics, mathematics or a comparable degree and at least three years of experience
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`working with client-server systems, networking technologies and applications, data
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`translations systems, and wireless and Internet communications protocols.”
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`Petitioner’s subsequent reliance on a different expert (Dr. Rosenberg) does
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`not allow it to repudiate its earlier definition of the skilled artisan. Petitioner did
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`not proffer Exhibit 1020, Dr. Rosenberg’s declaration, for anything other than that
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`which he is not qualified to do: provide opinions on the issue of anticipation, the
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`substance and disclosure of Elliot, and how a person of ordinary skill in the art
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`would understand Elliot. Paper 51 at 4; Paper 55 at 29:24-30:14. Indeed, Dr.
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`Rosenberg admits: “I have been asked to provide my opinions regarding whether
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`the claims of the ’970 Patent would have been anticipated, in light of the Elliot
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`reference.” Ex. 1020 at 5, ¶ 10; Paper 51 at 2-3. In this proceeding, Petitioner’s
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`attorney arguments are premised solely on the inadmissible opinions of Dr.
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`Rosenberg regarding invalidity, as illustrated by the Final Decision. See Final
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`Decision at 2, 15 (citing Ex. 1020 ¶¶ 12-26), and 17 (citing Ex. 1020 ¶¶ 32-34);
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`Paper 51 at 1-5. Thus, the opinions contained in Dr. Rosenberg’s declaration,
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`Exhibit 1020, should be properly excluded under the law.
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`Because the Final Decision cites to and relies on Dr. Rosenberg’s
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`inadmissible opinions, it should be modified and reversed. Petitioner has failed to
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`carry its burden to prove that claim 18 of the ’970 Patent is anticipated by Elliot.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`reconsider its Final Decision and find that Petitioner has failed to establish by a
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`preponderance of the evidence that claim 18 of the ’970 Patent is unpatentable.
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`Dated: June 5, 2015
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`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 5th day of June, 2015, a true and correct copy of
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`the foregoing Patent Owner’s Motion for Rehearing Pursuant to 37 C.F.R. §
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`42.71(d) was served on the following counsel for Petitioner Wavemarket, Inc.
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`d/b/a Location Labs via email:
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`mark.hogge@dentons.com
`scott.cummings@dentons.com
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`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
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`Mark L. Hogge
`Scott W. Cummings
`Dentons US LLP
`1301 K Street, N.W., Suite 600
`Washington DC 20005
`Tel: (202)408-6400
`Fax: (202)408-6399
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`Dated: June 5, 2015
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