Filed on behalf of Gordon * Howard Associates, Inc.
`
`By: Rodney B. Carroll (rcarroll@dfw.conleyrose.com)
`J. Robert Brown, Jr. (rbrown@dfw.conleyrose.com)
`Conley Rose, P.C.
`Granite Park Three
`
`5601 Granite Parkway, Suite 500
`Plano, Texas 75024
`Tel: (972) 731-2288
`Fax: (972) 731-2289
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`Trial Number: IPR2014-00712
`
`US. Patent No. 6,484,035
`
`Attorney Docket No. 7065-04701
`
`Issued: November 19, 2002
`
`Petitioner: Gordon * Howard Associates, Inc.
`
`Inventor: Alvin C. Allen, Jr.
`
`Panel: To be assigned
`
`Assignee: Lunareye, Inc.
`
`Title: Apparatus and Method for Triggerable Location Reporting
`
`DECLARATION OF JAMES M. JANKY
`
`GH EXHIBIT 1010
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Engagement .......................................................................................... 4
`
`Background and Qualifications ............................................................ 4
`
`Compensation and Prior Testimony ..................................................... 7
`
`Information Considered ........................................................................ 7
`
`II. LEGAL STANDARDS FOR PATENTABILITY ......................................... 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`Anticipation .......................................................................................... 8
`
`Obviousness .......................................................................................... 9
`
`Person of Ordinary Skill in the Art .................................................... 15
`
`Description of the Background Technology ...................................... 16
`
`III.THE ‘035 PATENT ...................................................................................... 18
`
`A.
`
`B.
`
`C.
`
`Technical Overview of the ‘035 Patent .............................................. 18
`
`Prosecution History of the ‘035 Patent .............................................. 20
`
`Claim Construction ............................................................................. 20
`
`IV. DETAILED INVALIDITY ANALYSIS .................................................... 22
`
`A.
`
`Claim 3 is Obvious Over Mohan in View Oncore .............................. 23
`
`i.
`
`ii.
`
`Disclosure of Mohan ..................................................................... 24
`
`Disclosure of Oncore .................................................................... 35
`
`iii.
`
`Rationale to Combine Mohan and Oncore .................................... 45
`
`B.
`
`Claim 3 is Obvious Over Mohan in View of the NMEA Standard..... 48
`
`i.
`
`ii.
`
`Disclosure of Mohan ..................................................................... 48
`
`Disclosure of the NMEA Standard ................................................ 57
`
`iii.
`
`Rationale to Combine Mohan and the NWA Standard ............... 63
`
`C.
`
`Claim 3 is Anticipated by LaDue ....................................................... 65
`
`i.
`
`ii.
`
`Disclosure of LaDue ...................................................................... 65
`
`LaDue Discloses All Elements of Claim 3 ................................... 68
`
`D.
`
`Claim 3 is Obvious over LaDue in View of Mohan ........................... 87
`
`i.
`
`ii.
`
`Disclosure of LaDue ...................................................................... 88
`
`Disclosure of Mohan ................................................................... 104
`
`2
`
`

`

`iii.
`
`Rationale to Combine LaDue and Mohan ................................... 108
`
`E.
`
`Claim 3 is Obvious over Mohan in View of LaDue and Oncore ..... 109
`
`i.
`
`ii.
`
`iii.
`
`iV.
`
`Disclosure of Mohan ................................................................... l 13
`
`Disclosure of LaDue .................................................................... 1 19
`
`Disclosure of Oncore .................................................................. 122
`
`Rationale to Combine Mohan, LaDue, and Oncore.................... 131
`
`V. CONCLUSION ........................................................................................... 134
`
`

`

`1, James M. Janky, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`A.
`
`Engagement
`
`1.
`
`I have been retained by counsel for Gordon * Howard Associates, Inc.
`
`(“GH”) as an expert witness in the above-captioned Petition for Inter Partes
`
`Review (“IPR”) of US. Patent No. 6,484,035 (“the ‘035 Patent”).
`
`I have been
`
`asked to render an opinion regarding the validity of Claim 3 of the ‘035 Patent,
`
`submitted as Ex. 1002. The following is my written report on that topic.
`
`B.
`
`Background and Qualifications
`
`2.
`
`I am an expert in the field of communications systems to support GPS
`
`applications, and have been an expert
`
`in the field since prior to 1998.
`
`In
`
`formulating my opinions,
`
`I have relied upon my training, knowledge, and
`
`experience in the relevant art.
`
`3.
`
`I have a Ph.D.
`
`in Electrical Engineering from Stanford University
`
`(1971). My doctoral thesis was titled “Optimization in the Design of a Mass-
`
`Producible Microwave Receiver Suitable for Direct Reception from Satellites.” I
`
`have a Master of Science Degree in Electrical Engineering from Stanford
`
`University (1966).
`
`I have a Bachelor of Science Degree in Electrical Engineering
`
`from University of Detroit (1965 — summa cum laude).
`
`

`

`4.
`
`From 1966-1968, I served as a Senior Engineer at Ford Aerospace in
`
`Palo Alto where I designed an ultra-stable state-of—the-art master clock oscillator
`
`for military satellite systems. From 1968—1972, I was a research associate/research
`
`assistant at Stanford University where I developed a design and prototype for a
`
`mass-producible microwave receiver,
`
`subsequently known as
`
`a 2.6 GHz
`
`Television-Receive-Only receiver. From 1972-1975,
`
`I served as the Assistant
`
`Director of Engineering at the Federation of Rocky Mountain States where I was
`
`responsible for the design, procurement, and installation of a l30—station satellite
`
`television broadcasting system. From 1975-76, I was a consultant at Stanford
`
`University concerning the technical management of a satellite system design for
`
`the government of Iran.
`
`5.
`
`From 1976 through 1980, I co-founded and served as Vice-President
`
`of Edutel Communications and Development Inc. which provided consulting
`
`services to the Agency for International Development for satellite communication
`
`systems design in developing countries and consulting services on satellite systems
`
`design and implementation for the Corporation of Public Broadcasting on the
`
`National Public radio satellite distribution system.
`
`6.
`
`From 1977-1981, I also co-founded Equatorial Communications &
`
`Development Inc., where I served as a board member and advisor. While at
`
`

`

`Equatorial Communications & Development Inc. I focused on designing small
`
`aperture bypass VSAT terminals.
`
`7.
`
`From 1980—1987, I co-founded Vitalink Communications, Inc. and
`
`served as Vice President of Engineering. As Vice President of Engineering, I
`
`focused on creating 5 m VSAT production definition, hiring development staff and
`
`bringing product to market.
`
`8.
`
`From 1985-1988, I served as an advisor to Ceramic Bonding, Inc.
`
`where I advised the company on technology options and business planning.
`
`9.
`
`From 1987-1988,
`
`I co-founded and served as Vice President of
`
`Tekoventure, Inc. where I worked on the technical development of PC—based data
`
`demodulators and other networking equipment.
`
`10.
`
`From 1988—91,
`
`I co-founded and served as Vice President and
`
`General Manager of Gamma Microwave Satcom Systems. While at Gamma
`
`Microwave Satcom Systems,
`
`I
`
`focused on creating a 3rd generation satcom
`
`radio/antenna product for Ku/C Band VSATs.
`
`11.
`
`From 1991-2005, I was employed by Trimble Navigation Limited
`
`(“Trimble”). From 1991-1995, I served as an engineering manager for the Survey
`
`& Vehicle Tracking Division.
`
`In 1995 I was promoted to Vice President of
`
`Intellectual Property and held this position until retirement in July of 2009.
`
`

`

`12.
`
`I am a named inventor on 77 issued United States Patents. These 77
`
`patents include patents concerning various Global Positioning System applications,
`
`including surveying, locating, tracking and positioning concepts utilizing cellular
`
`telephony, telemetry, and other data transmitting methods.
`
`13. A copy of my curriculum vitae is provided as Appendix A to this
`
`Declaration (EX. 1010) and provides a comprehensive description of my relevant
`
`experience, including academic and employment history, publications, conference
`
`participation, and issued and pending US. patents.
`
`C.
`
`Compensation and Prior Testimony
`
`14.
`
`I am being compensated at a rate of $450 per hour for my study and
`
`testimony in this matter.
`
`I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and testimony in this investigation. My
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony.
`
`15.
`
`I have never testified in Federal District Court.
`
`I formerly submitted
`
`an expert report in Lunareye, Inc. v. Webtech Wireless, Inc, CA. No. 9:07-cv-114
`
`(E.D. Tex.), involving the ‘035 Patent.
`
`D.
`
`Information Considered
`
`16.
`
`In forming the opinions expressed in this Declaration, I relied upon
`
`my years of education, research and experience, as well as my investigation and
`
`

`

`study of relevant materials, and have considered the Viewpoint of a person having
`
`ordinary skill in the relevant art, as of December 7, 1998. My opinions are based,
`
`at least in part, on the following:
`
`
`US. Patent No. 6,121,922 to Mohan Mohan was filed on October 12, 1994 and is
`(“Mohan”).
`attached as EX. 1006 to the IPR.
`
`
`The Oncore User’s Guide, Revision Oncore has a publication date of May 1996,
`7.0, 68P41117U01, ® Motorola,
`and is attached as Ex. 1007 to the IPR.
`1996, dated May 1996 (“Oncore”).
`
`
`
`
`The NMEA Standard has a publication date
`National Marine Electronics
`Association Standard, NMEA-0183, of August 1, 1994 and is attached as Ex.
`Version 2.01., August 1, 1994
`1008 to the IPR.
`
`(“NMEA Standard”).
`
`US. Patent No. 5,594,740 to LaDue LaDue was filed on April 3, 1996 and is
`(“LaDue”).
`attached as Ex. 1009 to the IPR.
`
`
`II.
`
`LEGAL STANDARDS FOR PATENTABILITY
`
`17.
`
`In expressing my opinions and considering the subject matter of the
`
`claims of the ’035 Patent, I am relying upon certain basic legal principles that
`
`counsel has explained to me.
`
`18.
`
`I understand that prior art to the ‘035 Patent includes patents and
`
`printed publications in the relevant art that predate the December 7, 1998 priority
`
`date of the ‘035 Patent.
`
`A.
`
`Anticipation
`
`19.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art. I have applied these
`
`8
`
`

`

`standards in my evaluation of whether the claims asserted in this investigation are
`
`anticipated.
`
`I understand that in this context the burden is on the party asserting
`
`unpatentability to prove it by a preponderance of the evidence. I understand that “a
`
`preponderance of the evidence” is evidence sufficient to show that a fact is more
`
`likely than not.
`
`20.
`
`I understand that, for a patent claim to be “anticipated” by the prior art,
`
`each and every requirement of the claim must be found, expressly or inherently, in a
`
`single prior art reference as recited in the claim.
`
`I understand that claim elements
`
`that are not expressly found in a prior art reference are inherent if the prior art
`
`necessarily functions in accordance with, or includes, the claim elements.
`
`21.
`
`I understand that it is acceptable to examine evidence outside the prior
`
`art reference (extrinsic evidence) in determining whether a feature, while not
`
`expressly discussed in the reference, is necessarily present within that reference.
`
`B.
`
`Obviousness
`
`22.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`23.
`
`I understand that the Obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`

`

`A patent may not be obtained though the invention is not identically
`
`disclosed or described as set forth in section 102 of this title, if the
`
`differences between the subject matter sought to be patented and the
`
`prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having
`
`ordinary skill
`
`in the art
`
`to which said subject matter pertains.
`
`Patentability shall not be negatived by the manner in which the
`
`invention was made.
`
`24.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious.
`
`I have applied these standards in my
`
`evaluation of whether Claim 3 of the ‘035 Patth would have been considered
`
`obvious at the time of the invention.
`
`25.
`
`I understand that a claim in a patent is obvious when the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill
`
`in the art to which the subject matter
`
`pertains.
`
`26.
`
`I understand that obviousness may be shown by considering more
`
`than one item of prior art.
`
`I also understand that
`
`the relevant
`
`inquiry into
`
`obviousness requires consideration of four factors (although not necessarily in the
`
`following order):
`
`° The scope and content of the prior art;
`
`10
`
`

`

`° The differences between the prior art and the
`
`claims at issue;
`
`0 The knowledge of a person of ordinary skill
`
`in the pertinent art; and
`
`0 Whatever objective factors indicating obviousness
`
`or non-obviousness may be present in any particular
`
`case.
`
`27.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but should be done through the eyes of a person of ordinary skill
`
`in the relevant art at the time the priority date of the subject patent (i.e., December
`
`7, 1998).
`
`28.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by the infringer or others in the
`
`field; the taking of licenses under the patent by others; expressions of surprise by
`
`experts and those skilled in the art at the making of the invention; and the patentee
`
`proceeded contrary to the accepted wisdom of the prior art.
`
`11
`
`

`

`29.
`
`I understand that the combination of familiar elements according to
`
`known methods is likely to be obvious when it does no more than yield predictable
`
`results. I understand that when a work is available in one field of endeavor, design
`
`incentives and other market forces can prompt variations of that work, either in the
`
`same field or a different one. If a person of ordinary skill can implement a
`
`predictable variation,
`
`that variation would have been considered obvious.
`
`I
`
`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yields unexpected
`
`results or challenges in implementation.
`
`30.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but instead
`
`can take account of the “ordinary innovation” that does no more than yield
`
`predictable results, which are inferences and creative steps that a person of ordinary
`
`skill in the art would employ.
`
`31.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents;
`
`the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge possessed
`
`by a person having ordinary skill in the art. I understand that all these issues may be
`
`12
`
`

`

`considered to determine whether there was an apparent reason to combine the
`
`known elements in the fashion claimed by the patent at issue.
`
`32.
`
`I understand that the obviousness analysis cannot be confined by a
`
`formalistic conception of the words “teaching, suggestion, and motivation.” I
`
`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
`
`Teleflex, Inc. where the Court rejected the previous requirement of a “teaching,
`
`suggestion, or motivation to combine” known elements of prior art for purposes of
`
`an obviousness analysis as a precondition for finding obviousness.
`
`It
`
`is my
`
`understanding that KSR confirms that any motivation that would have been known
`
`to a person of skill in the art, including common sense, or derived from the nature
`
`of the problem to be solved, is sufficient to explain why references would have been
`
`combined.
`
`33. A person of ordinary skill attempting to solve a problem will not be
`
`led only to those elements of prior art designed to solve the same problem. I
`
`understand that under the KSR standard, common sense is important and should be
`
`considered. Common sense teaches that familiar items may have obvious uses
`
`beyond the particular application being described in a reference, that if something
`
`can be done once it is obvious to do it multiple times, and in many cases a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like pieces
`
`of a puzzle. As such, the prior art considered can be directed to any need or problem
`
`13
`
`

`

`known in the field of endeavor at the time of the invention and can provide a reason
`
`for combining the elements of the prior art in the manner claimed.
`
`In other words,
`
`the prior art does not need to be directed towards solving the same problem that is
`
`addressed in the patent. Further, the individual prior art references themselves need
`
`not all be directed towards solving the same problem.
`
`34.
`
`I understand that an invention that might be considered an obvious
`
`variation on, or modification of, the prior art may nonetheless be considered non-
`
`obvious if one or more prior art references discourage or lead away from the line of
`
`inquiry disclosed in the reference(s). A reference does not “teach away” from an
`
`invention simply because the reference suggests that another embodiment of the
`
`invention is optimal or preferred. My understanding of the doctrine of teaching
`
`away requires some clear discouragement of that combination in the prior art —
`
`such as expressly stated reasons why one should not make the claimed combination
`
`or invention.
`
`35.
`
`I understand that a person of ordinary skill is also a person of ordinary
`
`creativity.
`
`36.
`
`I further understand that in many fields, it may be that there is little
`
`discussion of obvious techniques or combination, and it often may be the case that
`
`market demand, rather than scientific literature or knowledge, will drive design
`
`trends. When there is such a design need or market pressure to solve a problem and
`
`14
`
`

`

`there are a finite number of identified, predictable solutions, a person of ordinary
`
`skill has good reason to pursue the known options within their technical grasp. If
`
`this leads to the anticipated success, it is likely the product not of innovation but of
`
`ordinary skill and common sense.
`
`In that instance the fact that a combination was
`
`obvious to try might show that
`
`it was obvious. The fact
`
`that a particular
`
`combination of prior art elements was “obvious to try” may indicate that the
`
`combination was obvious even if no one attempted the combination. If the
`
`combination was obvious to try (regardless of whether it was actually tried) or leads
`
`to anticipated success, then it is likely the result of ordinary skill and common sense
`
`rather than innovation.
`
`37.
`
`I have applied these above-recited standards in my evaluation of
`
`whether Claim 3 of the ‘035 Patent would have been considered anticipated or
`
`obvious at the time of the invention.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`38.
`
`Based on my personal experiences over the last forty-plus years in
`
`both academia and in business, I believe a person of ordinary skill in the art in the
`
`field of the ‘035 Patent would be someone who, on or about December 7, 1998, was
`
`familiar with Global Positioning System technology, e.g., commercially available
`
`GPS receivers, as well as being familiar with general communication technology,
`
`e. g., cellular communication or other types of telemetry.
`
`15
`
`

`

`39.
`
`I believe that the person of ordinary skill in the art would have a
`
`bachelor’s degree in electrical or computer engineering and may have worked
`
`towards and/or received a graduate degree in one of these disciplines.
`
`40.
`
`I believe, the person of ordinary skill in the art may have worked in
`
`academia (either as a professor or a graduate student), for a technology company, or
`
`for a government.
`
`41. Alternatively, I believe that the person of ordinary skill in the art may
`
`be a person who has significant practical experience with GPS technology, such as
`
`at least a five year employment history with a technology company where the
`
`person worked directly with the design and implementation of GPS technology in
`
`conjunction with data transmission and/or formatting technologies.
`
`D.
`
`Description of the Background Technology
`
`42.
`
`In 1973, a meeting of about twelve military officers at the Pentagon
`
`discussed the creation of a Defense Navigation Satellite System (DNSS). Later that
`
`year, the DNSS program was named Navstar, or Navigation System Using Timing
`
`and Ranging. A more fully encompassing name was used to identify the
`
`constellation of Navstar satellites, Navstar-GPS, which was later shortened simply
`
`to GPS. Ten “Block I” prototype satellites were launched between 1978 and 1985.
`
`43. Until 1983, GPS technology was available for US. military use only,
`
`and even when civilian use was allowed, the highest quality signal was reserved for
`
`16
`
`

`

`military use, and the signal available for civilian use was intentionally degraded
`
`(Selective Availability).
`
`It wasn’t until May 1, 2000, when Selective Availability
`
`was turned off, that civilian GPS accuracy went from 100 meters down to 20
`
`meters.
`
`44. During my time at Trimble, on or about 1993, Trimble developed and
`
`released a short-range correction system that would bring the accuracy of the GPS
`
`measurements from 20 meters to 2 centimeters.
`
`45. As a result of the improved accuracy of GPS devices, and also aided
`
`in part by the timely miniaturization GPS components, more wide-spread uses for
`
`GPS devices developed, e.g., the integration of GPS receiver functionality into
`
`automotive components, personal computers, smartphones, etc.
`
`46. While working for Trimble during the 19905,
`
`I was aware of
`
`competitor companies, including Motorola. Motorola’s Oncore GPS devices were
`
`well-known at that time to those in the field.
`
`47.
`
`Like the Trimble products, Motorola’s Oncore GPS devices were
`
`capable of deriving a lot of other data in addition to time, latitude, longitude, and
`
`altitude. Other such data includes horizontal speed, vertical speed, heading, date,
`
`and a variety of satellite-related information, such as the number of satellites used
`
`to obtain a position fix, and their satellite ID numbers.
`
`17
`
`

`

`48.
`
`The NMEA Standard-0183 was also well—known to a person of
`
`ordinary skill.
`
`49.
`
`Trimble and Motorola were just a few of the manufacturers that
`
`incorporated the NMEA-0183 standard into its devices.
`
`50.
`
`As will be shown in detail herein, Lunareye did not invent GPS
`
`receivers, nor cellular network transmitters, nor power management systems, all of
`
`which were well known in advance of the ‘035 Patent.
`
`51.
`
`Further, the data selecting and data reordering elements of the ‘035
`
`Patent were also well known at the time of filing of the ‘035 Patent.
`
`III. THE ‘035 PATENT
`
`A.
`
`Technical Overview of the ‘035 Patent
`
`52. According to the ‘035 Patent’s FIELD OF THE INVENTION:
`
`[t]his invention relates generally to location reporting apparatus and
`
`methods. More particularly, this invention relates to location reporting
`
`apparatus and methods that use the Global Positioning Satellite
`
`System (“GPS”)
`
`to ascertain an object’s location.
`
`Even more
`
`particularly, this invention relates to location reporting apparatus and
`
`methods that are triggerable and that report their location derived from
`
`GPS signals, via telemetry. (Ex. 1002, Col. 1, 11. 8—15.)
`
`53.
`
`Further, according to the ‘035 Patent’s Summary of the Invention:
`
`“[u]pon receipt of a page or the occurrence of another triggering action,
`
`the
`
`18
`
`

`

`invention determines its location using GPS signals and reports the location via
`
`cellular or satellite telemetry.” (Ex. 1002, Col. 1, 11. 62-65.) “FIG. 2 is a block
`
`diagram of one embodiment of the apparatus according to the invention.” (Id. at
`
`Col.3,11. 1-2.)
`
`Receiver
`
`Global
`Positioning
`Satellite
`System
`
`52
`
`Fig. 2
`
`54.
`
`As shown in Fig. 2 above, the apparatus comprises a GPS system
`
`receiver 48, a cellular network transmitter 58, a page receiver 34, and a battery 38,
`
`all of which interface with controller 36 (e.g., a microprocessor), which operates as
`
`follows. (Ex. 1002, Fig. 2, Col. 5, 11. 49 — Col. 6, ll. 22.) Upon receipt of a page,
`
`page receiver 34 transmits a “power-on” signal to controller 36.
`
`In response, the
`
`controller 36 turns on power to the GPS receiver 48 and the cellular network
`
`transmitter 58. The GPS receiver 58 receives GPS signals from various satellites
`
`l9
`
`

`

`via antenna 50 and determines a variety of GPS data regarding the apparatus. The
`
`GPS receiver 48 then sends its GPS data 52 to the controller 36. The controller 36,
`
`in turn, sends formatted GPS data to the cellular network transmitter 54, which
`
`transmits a signal including GPS data. (Id.)
`
`B.
`
`Prosecution History of the ‘035 Patent
`
`55.
`
`The ‘035 Patent issued on November 19, 2002, from US. Patent
`
`App. No. 10/008,893 (“the ’893 Application”), filed on November 13, 2001. (Ex.
`
`1002, the ‘035 Patent.) The ‘035 Patent claims priority to U.S. Patent App. No.
`
`09/206,627 (“the ‘627 Application”), filed on December 7, 1998 and ultimately
`
`abandoned.
`
`56.
`
`On September 28, 2007, a third party filed a request
`
`for
`
`re-
`
`examination of the ‘035 Patent, which the Patent Office granted on November 29,
`
`2007. The Patent Office issued a re-examination certificate on September 15, 2009
`
`that confirmed the patentability of Claim 3 of the ‘035 Patent.
`
`C.
`
`Claim Construction
`
`57.
`
`I understand that in the context of an inter partes review, claims are
`
`given their broadest reasonable interpretation in light of the specification.
`
`58.
`
`I also understand that if no explicit definition is provided for a term in
`
`the patent specification, the claim terms must be given their plain meaning unless
`
`20
`
`

`

`that meaning is plainly inconsistent with a meaning given the term by its use in the
`
`specification.
`
`59.
`
`I understand that GH has proposed the following constructions for
`
`terms used in the Challenged Claims in the Petition for IPR. I consider these
`
`constructions to be reasonable in view of the specification.
`
`0
`
`Location signal generating device: “some form of device
`
`capable of producing location data, including but not limited to, a GPS device.”
`
`0
`
`Location data: “data generated by the location-signal generating
`
`device, which includes, but is not limited to, GPS data such as latitude, longitude,
`
`height, velocity, heading, and time.”
`
`o
`
`Telemetry transmitter: “a device that
`
`transfers data using
`
`telecommunication techniques or methods, which includes, but is not limited to, a
`
`cellular network transmitter.”
`
`0
`
`To enable: “to place into an operable state or mode, including to
`
`turn on or place in a full power mode.”
`
`0
`
`When enabled: “in an operable state or mode, including when
`
`turned on or operating under full power.”
`
`0
`
`To disable: “to place into an inoperable state or mode, including
`
`to turn off or place in a low power mode.”
`
`21
`
`

`

`0
`
`Enable controller: “a device capable of implementing the
`
`enable/disable functionality, including turning a device on and off, which may be a
`
`microprocessor or component thereof.”
`
`0
`
`Location signal: “a signal comprising location data, which
`
`includes, but is not
`
`limited to, GPS data such as latitude,
`
`longitude, height,
`
`velocity, heading, and time.”
`
`60.
`
`I apply these constructions as the broadest reasonable constructions in
`
`View of the specification for purposes of my Declaration in support of this IPR. To
`
`the extent these terms are construed broader than GH’s proposed constructions, the
`
`Challenged Claims are even more easily invalidated.
`
`IV. DETAILED INVALIDITY ANALYSIS
`
`61.
`
`As explained in more detail below, I believe that Claim 3 of the ‘035
`
`Patent would have been obvious to one of ordinary skill in the art in December of
`
`1998 in light of Mohan, Oncore, the NJWEA Standard, and/or LaDue, particularly
`
`when the claims are given their broadest reasonable interpretation consistent with
`
`the specification of the ‘035 Patent. 1 also believe that Claim 3 of the ‘035 Patent is
`
`anticipated by LaDue.
`
`62.
`
`Claim 3 of the ‘035 Patent is reproduced below, with annotations for
`
`ease of reference:
`
`22
`
`

`

`3.
`
`A triggerable location-reporting apparatus comprising
`
`[the “triggerable” preamble]:
`
`[a] a location—signal generating device configured to
`
`produce a location signal including location data when enabled
`
`[the “GPS” element];
`
`[b] a data selecting device for selecting less than all of
`
`the location data to include in the location signal [the “data
`
`selecting” element];
`
`[0] a telemetry transmitter coupled to the data selecting
`
`device configured to transmit the location signal when enabled
`
`[the “telemetry” element]; and
`
`[d] an enable controller configured to enable the location—
`
`signal generating device and the telemetry transmitter when it
`
`receives a trigger signal and to disable the location-signal
`
`generating device and the telemetry transmitter after
`
`the
`
`telemetry transmitter
`
`transmits
`
`the
`
`location
`
`signal
`
`[the
`
`“enable/disable” element];
`
`[e] wherein the data selecting device reorders the selected
`
`location data [the “data reordering” element].
`
`A.
`
`63.
`
`Claim 3 is Obvious Over Mohan in view Oncore
`
`Appendix B, attached hereto, is a claim chart setting forth a detailed
`
`element by element comparison showing that each and every element of Claim 3 is
`
`disclosed by the prior art combination of Mohan and Oncore. The element by
`
`element analysis of Claim 3 in comparison to the combination of Mohan and
`
`Oncore is further summarized in the following discussion.
`
`23
`
`

`

`i.
`
`Disclosure of Mohan
`
`64.
`
`Mohan issued on September 19, 2000 from an application filed on
`
`October 12, 1994.
`
`I understand Mohan is prior art to the ‘035 Patent at least under
`
`§ 102(e) because it was filed before the priority date of the ‘035 Patent.
`
`65. Mohan explains that mobile location reporting devices incorporating a
`
`GPS receiver and combined with a cellular network transmitter were known in the
`
`art. The Background of the Invention states:
`
`Wireless geographic position determination systems have evolved to
`
`the point where they are commercially affordable and are now
`
`important in many applications, including terrain mapping, vehicle
`
`tracking, and so forth. Although early ground-based systems such as
`
`Loran—C were lacking in accuracy and reliability, with the advent of
`
`GPS or global positioning satellite systems, very accurate and reliable
`
`geographic fixes may be obtained. U.S. Pat. No. 5,225,842 “Vehicle
`
`Tracking System Employing Global Positioning System (GPS)
`
`Satellites” provides
`
`a usefiJl background,
`
`including technical
`
`descriptions of previous and existing geographic positioning systems,
`
`including the GPS infrastructure.
`
`Along with the evolution of satellite-based positioning systems,
`
`telecommunications networks have also evolved to allow mobile
`
`communications using very small transceivers, for example, with the
`
`hand-held telephones now commonly
`
`employed
`
`for
`
`cellular
`
`communications. The advantage of a cellular network, of course,
`
`24
`
`

`

`includes the ability to send and receive calls despite changing position
`
`within a particular service area.
`
`In some situations, it makes sense to integrate the capabilities of
`
`wireless
`
`geographical
`
`positioning
`
`with
`
`mobile
`
`telecommunications. For this reason, various vehicle tracking
`
`systems have evolved which combi