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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`WAVEMARKET, INC. D/B/A/ LOCATION LABS
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`Petitioner
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`v.
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`LOCATIONET SYSTEMS, LTD.
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`Patent Owner
`____________________
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`Case IPR2014-00199
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`U.S. Patent 6,771,970
`____________________
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`Patent Owner’s Opposition to Petitioner’s Request
`For Rehearing Pursuant To 37 C.F.R. §§ 42.71(c)–(d)
`For Partial Reconsideration of the Decision To Institute
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`I.
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`II.
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`Table of Contents
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`Introduction ................................................................................................... 1
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`Standard of Review ........................................................................................ 1
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`III.
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`The Board’s Finding that Fitch Does Not Teach the “location determination
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`system” of Independent Claim 1 Is Correct, Reasonable, and Supported By
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`Substantial Evidence ...................................................................................... 2
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`IV.
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`The Board’s Finding that Fitch Does Not Teach the “determining for each
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`mobile platform one of the remote tracking systems that is capable of
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`locating said mobile platform” Step of Independent Claims 14, 16, and 19 Is
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`Correct, Reasonable, and Supported By Substantial Evidence ...................... 4
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`V.
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`The Board’s Decision Denying Institution of Dependent Claims 2–13, 15,
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`and 17 Is Correct, Reasonable, and Supported By Substantial Evidence ....... 5
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`VI.
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`Conclusion ..................................................................................................... 5
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`Opposition to Request for Rehearing – IPR2014-00199
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`I.
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`Introduction
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`Petitioner’s Request For Rehearing (Paper No. 20; “Req.”) of the Board’s
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`Decision of May 9, 2014 (Paper No. 18; “Dec.”) denying review of claims 1–17 and
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`19 based on U.S. Patent No. 6,321,092 (“Fitch”) alone or in combination with
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`other references should be denied for three reasons.1 First, the Petitioner failed
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`to demonstrate that the Board abused its discretion in denying review of claims
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`1–17 and 19 based on Fitch alone or in combination with other references.
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`Second, Petitioner’s Request presents new arguments and theories that are
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`inconsistent with the arguments and mapping of the Fitch reference to the claim
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`elements presented in its IPR Petition (Paper No. 1; “Pet.”). Third, the Board’s
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`Decision is correct, reasonable, and supported by substantial evidence.
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`II.
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`Standard of Review
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`A motion for rehearing the Board’s Decision is reviewed for an abuse of
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`discretion. 37 C.F.R. § 42.71(c)–(d). “An abuse of discretion occurs if the decision
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`(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous
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`conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a
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`record that contains no evidence on which the Board could rationally base its
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`decision.” Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citing
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`1 Petitioner’s Request only addresses “grounds relying on Fitch alone or in
`combination with Jones, Shah, or Elliot.” (Req. at 1 n.1.)
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`Heat & Control, Inc. v. Hester Indus., Inc., 785 F. 2d 1017, 1022 (Fed. Cir. 1986)).
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`Under this standard, “as long as the [Board’s] choice falls within a reasonable
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`range, it cannot constitute an abuse of discretion.” Id. at 1053.
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`As the party challenging the Board’s Decision, Petitioner has the burden of
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`proof, and among other things, must specifically identify “the place where each
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`matter was previously addressed.” 37 C.F.R. § 42.71(d). “A request for rehearing
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`is not an opportunity to present new arguments or evidence that could have been
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`presented in the petition.” EFF v. Personal Audio, LLC, IPR2014-0070, No. 28 at 5.
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`III.
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`The Board’s Finding that Fitch Does Not Teach the “location
`determination system” of Independent Claim 1 Is Correct, Reasonable,
`and Supported By Substantial Evidence
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`The Board did not abuse its discretion by finding that Petitioner failed to
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`provide "evidence sufficient to demonstrate that Fitch describes that LFS 116, LM
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`116, or LM 214, LFS 214 (Fig. 2) (i.e., location determination system) is arranged
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`to perform the function of determining which of LFEs 104, 106, 108, 110, 202,
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`204, and 206 is appropriate for use and to cause that system to be used.” Dec. at
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`22. Petitioner’s contention that “the Petition pled facts demonstrating that
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`LFS/LM (116/214) cooperates with other components of platform 114” to teach
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`the “location determination system” of claim 1 is directly contradicted by the
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`Petition itself. Req. at 2. The Petition specifically attempted to map the “Location
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`Opposition to Request for Rehearing – IPR2014-00199
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`Finding System (LFS) (116)” in Fitch to the “location determination system” of
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`claim 1. See Pet. at 36. It did not, however, include any assertion that the
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`“location determination system” of claim 1 is “platform 114, which includes inter
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`alia, LFS/LM (116/214) and wireless location applications (118 and 226–230).”
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`Req. at 3 (emphasis in original). Indeed, while the Petition asserted that the LFS
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`(116) is “resident on the platform (114),” it never identified the network platform
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`(114) as the “location determination system” of claim 1. Pet. at 36–39.
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`Claim 1 further requires “said location determination system is arranged to
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`determine an appropriate one of the plurality of remote tracking systems.” Based
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`on the disclosure of Fitch and Petitioner’s own arguments and claim mapping, the
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`Board properly found that “Fitch does not describe that LFS 116, LM 116, or
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`LM214, LFS 214 selectively prompt one or more LFEs.” Dec. at 21–22. In its
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`Request, Petitioner concedes that the LFS/LM (116/214) alone is insufficient, but
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`instead, contends for the first time that “the LFS/LM (116/214) works together
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`with wireless location-based applications (118 and 226–230) and WLI (224) (as
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`part of platform 114) to selectively prompt the LFEs.” Req. at 6 (emphasis in
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`original). In other words, Petitioner now self-servingly argues that the claimed
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`“location determination system” can map to any number of things in Fitch,
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`including the network platform (114), the LFS (116/214), the wireless location-
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`Opposition to Request for Rehearing – IPR2014-00199
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`based applications (118 and 226–230), the wireless location interface (WLI) (224),
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`or any combination thereof. Req. at 6. Indeed, the Petition did not include any
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`argument, theory, or explanation of how LFS/LM (116/214) “works together with”
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`or “cooperates with” wireless-based applications (118 and 226–230) and WLI
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`(224) to describe the claimed “location determination system.”
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`Even if Petitioner had made such an argument, it is of no moment because
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`Fitch describes that the wireless location applications 226, 228, and 230 merely
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`function to “selectively access information stored in the LC 220 or prompt one or
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`more of the LFEs 202, 204 and/or 206 to initiate a location determination.” Fitch
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`at 10:61–63 (emphasis added). The system disclosed in Fitch makes use of
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`location information “originating from any available LFE source” (Fitch at 11:1–
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`2)—rather than “determine an appropriate one of the plurality of remote tracking
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`systems” as is claimed. Thus, the wireless location applications (226, 228, and
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`230), LFS (116), WLI (224), or any combinations thereof in Fitch, are not “arranged
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`to determine an appropriate one of the plurality of remote tracking systems.”
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`IV.
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`The Board’s Finding that Fitch Does Not Teach the “determining for each
`mobile platform one of the remote tracking systems that is capable of
`locating said mobile platform” Step of Independent Claims 14, 16, and 19
`Is Correct, Reasonable, and Supported By Substantial Evidence
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`Likewise, the Board did not abuse its discretion by finding that Petitioner
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`failed to provide "evidence sufficient to demonstrate that Fitch describes
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`Opposition to Request for Rehearing – IPR2014-00199
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`determining for each wireless station 102 (i.e., mobile platform) one of LFEs 104,
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`106, 108, 110, 202, 204, and 206, that is capable of locating wireless station 102.”
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`Dec. at 23 (emphasis added). For reasons similar to the reasons set forth above,
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`Petitioner’s own arguments and mapping of Fitch failed to describe the step of
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`“determining for each mobile platform one of the remote tracking systems that is
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`capable of locating said mobile platform” as required by claims 14, 16, and 19.
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`Moreover, the Petition relied upon and cited to passages in Fitch that fail to even
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`mention wireless station 102, let alone explain how the claimed step is described.
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`See Pet. at 44, 47, and 54; Req. at 23.
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`V.
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`The Board’s Decision Denying Institution of Dependent Claims 2–13, 15,
`and 17 Is Correct, Reasonable, and Supported By Substantial Evidence
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`Other than the new and improper arguments previously discussed,
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`Petitioner’s Request provides no other basis for seeking rehearing of dependent
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`claims 2–13, 15, and 17. Thus, because Petitioner failed to demonstrate a
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`reasonable likelihood of prevailing on independent claims 1, 14, 16, and 19 based
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`on the record evidence, the Board’s Decision denying institution of dependent
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`claims 2–13, 15, and 17 was not an abuse of discretion.
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`VI.
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`Conclusion
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`In view of the foregoing, Patent Owner respectfully requests that the Board
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`deny Petitioner’s Request in its entirety.
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`Opposition to Request for Rehearing – IPR2014-00199
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`Dated: June 6, 2014
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`Respectfully submitted,
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`By: /s/ Thomas Engellenner
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`Thomas Engellenner, Reg. No. 28,711
`engellennert@pepperlaw.com
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`Reza Mollaaghababa, Reg. No. 43,810
`mollaaghababar@pepperlaw.com
`Attorneys for Patent Owner
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`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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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 6, 2014, a true and correct copy of this paper,
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S REQUEST FOR REHEARING PURSUANT TO 37
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`C.F.R. §§ 42.71(C)–(D) FOR PARTIAL RECONSIDERATION OF THE DECISION TO INSTITUTE, was
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`served on the following counsel for Petitioner WaveMarket, Inc. via email and
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`Federal Express:
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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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`mark.hogge@dentons.com
`scott.cummings@dentons.com
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`Dated: June 6, 2014
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`Respectfully submitted,
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`By: /s/ Thomas Engellenner
`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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`#26909641 v1
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