`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)
`
`
`
`
`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`CALLWAVE COMMUNICATIONS, LLC
`Patent Owner
`___________________
`
`Case No. IPR2014-00920
`U.S. Patent 6,771,970
`___________________
`
`
`LOCATIONET SYSTEMS, LTD’S
`PATENT OWNER RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page(s)
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. ALLEGED GROUNDS ................................................................................. 2
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 9
`
`IV. CLAIM CONSTRUCTION ........................................................................... 9
`A.
`“a property that is predetermined for each mobile platform” ............ 10
`B.
`“said location determination system is arranged to determine an
`appropriate one of the plurality of remote tracking systems” ............ 11
`“map database” ................................................................................... 11
`“mobile platforms” ............................................................................. 12
`“a location determination system” ..................................................... 12
`“a communication system” ................................................................. 12
`“a plurality of remote tracking systems” ............................................ 13
`“each remote tracking system belongs to a different company
`and supervises a different group of mobile platforms” ...................... 13
`
`C.
`D.
`E.
`F.
`G.
`H.
`
`V.
`
`TECHNICAL OVERVIEW OF THE ‘970 PATENT ................................. 14
`
`VI. TECHNICAL OVERVIEW OF THE ASSERTED PRIOR ART ............... 17
`A.
`Fitch – “Multiple Input Data Management For Wireless
`Location-Based Applications” (Ex. 1105) ......................................... 17
`Roel-Ng – “System and Method For Informing Network of
`Terminal-Based Positioning Method Capabilities” (Ex. 1107) ......... 19
`Elliot – “Anytime/Anywhere Child Locator System” (Ex. 1110) ..... 20
`
`B.
`
`C.
`
`
`
`-i-
`
`
`
`B.
`
`C.
`
`VII. PETITIONER’S ASSERTED GROUNDS FAIL TO RENDER THE
`CHALLENGED CLAIMS OBVIOUS ........................................................ 21
`A.
`The Combination of Fitch and Roel-Ng Does Not Disclose An
`Element of All The Independent Claims: “adapted to determine
`the location of a respective mobile platform according to a
`property that is predetermined for each mobile platform” ................. 21
`The Teaching of Roel-Ng Is Contrary To The Intended Purpose
`And Principle of Operation of Fitch ................................................... 26
`Petitioner’s Articulated Rationale And Teachings For A
`Finding Of Obviousness Based On The Combination of Fitch
`and Roel-Ng Is Not Sufficient And Refuted By The Evidence ......... 33
`The Combination of Fitch, Roel-Ng, and Elliot Does Not
`Disclose A “Map Database” As Required By Claims 2-7, 15,
`and 17 And “Correlating The Location Of Each Mobile
`Platform With A Map Database” As Required By Claims 15
`and 17. ................................................................................................ 36
`The Combination of Fitch and Roel-Ng Does Not Disclose
`“each remote tracking system belongs to a different company
`and supervises a different group of mobile platforms” As
`Required By Claim 13. ....................................................................... 38
`
`D.
`
`E.
`
`VIII. THE IPR IS BARRED BECAUSE PETITIONER FILED THE
`PETITION MORE THAN ONE YEAR AFTER PETITIONER’S
`PRIVIES WERE SERVED WITH A COMPLAINT ALLEGING
`INFRINGEMENT OF THE ‘970 PATENT. ................................................ 40
`A.
`The Applicable Law Supports A Finding of Privity .......................... 40
`
`
`
`-ii-
`
`
`
`2.
`
`3.
`
`Petitioner Was In Privity With Its Customers Sprint, AT&T,
`and T-Mobile At The Time Each Was Served With A
`Complaint Alleging Infringement of The ‘970 Patent ....................... 44
`1.
`Petitioner Licensed Its “Family Locator” Service to
`Sprint, AT&T, and T-Mobile ................................................... 44
`Petitioner Has A Contractual Obligation To Indemnify
`Sprint, AT&T, and T-Mobile For Patent Infringement of
`The ‘970 Patent Based On The Family Locator Service ......... 45
`Petitioner Filed The Petition More Than One Year After
`Sprint, AT&T, and T-Mobile Were Served With
`Complaints Alleging Infringement of The ‘970 Patent ........... 49
`Petitioner Was In Privity With Its Customers Sprint, AT&T,
`and T-Mobile As Of June 9, 2014 – The Filing Date of The
`Petition ................................................................................................ 50
`1.
`Petitioner and Its Customers Sprint, AT&T, and T-
`Mobile Were All Represented By Shared Counsel From
`Dentons Prior To June 9, 2014 ................................................ 51
`Petitioner and Each of Sprint, AT&T, and T-Mobile
`Operated Pursuant To A Joint Defense/Common Interest
`Agreement Prior to June 9, 2014 ............................................. 53
`Petitioner’s Representations Confirm That Petitioner
`Exercised Control and Funding of The District Court
`Proceedings Against Sprint, AT&T, and T-Mobile Prior
`to June 9, 2014 ......................................................................... 57
`
`B.
`
`C.
`
`2.
`
`3.
`
`IX. CONCLUSION ............................................................................................. 60
`
`
`
`-iii-
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Asahi Glass Co., Ltd. v. Toledo Eng’g Co.,
`505 F. Supp. 2d 423 (N.D. Ohio 2007) ........................................................ 42, 43
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 9
`
`In re Hoeksema,
`399 F.2d 269 (CCPA 1968) ................................................................................ 35
`
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ............................................................................ 33
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 33, 35
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................... 9, 10
`
`Synopsys, Inc. v. Mentor Graphics Corporation,
`IPR2012-00042, Paper 60 (PTAB Feb. 19, 2014) .............................................. 41
`
`VMware, Inc. v. Good Technology Software, Inc.,
`IPR2014-01324, Paper 28 (PTAB Feb. 20, 2015) .............................................. 41
`
`
`
`STATUTES
`
`35 U.S.C. §103 ........................................................................................................... 3
`
`35 U.S.C. § 315(b) ......................................................................................... 2, 40, 60
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.8(b)(2) .............................................................................................. 49
`
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`
`
`
`-iv-
`
`
`
`37 C.F.R. §42.101(b) ......................................................................................... 41, 42
`37 CPR. §42.101(b) ......................................................................................... 41, 42
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 CPR. § 42.107 ..................................................................................................... 1
`
`77 Fed. Reg. 48,756 (Aug. 12, 2012) .................................................................. 9, 42
`77 Fed. Reg. 48,756 (Aug. 12, 2012) .................................................................. 9, 42
`
`
`
`-v-
`
`
`
`
`
`Ex. #
`
`2101
`
`2102
`
`2103
`
`2104
`
`2105
`
`2106
`
`2107
`
`2108
`
`2109
`
`
`
`PATENT OWNER’S EXHIBITS
`
`
`Description
`
`Corrected Petition For Inter Partes Review of U.S. Patent No.
`6,771,970, IPR2014-00199, Paper 6.
`
`Decision Institution of Inter Partes Review 37 C.F.R. § 42.108,
`IPR2014-00199, Paper 18.
`
`Petitioner’s Request For Rehearing Pursuant To 37 C.F.R. §§
`42.71(c)–(d) For Partial Reconsideration Of The Decision To
`Institute, IPR2014-00199, Paper 20.
`
`Decision On Request For Rehearing 37 C.F.R. § 42.71(d), IPR2014-
`00199, Paper 24.
`
`U.S. Patent No. 6,321,092 issued to Fitch, IPR2014-00199, Exhibit
`1004.
`
`April 17, 2013, Copy of email from Edward M. Abbati, Vice
`President of Finance for Location Labs, to Richard Sanders, Chief
`Executive Officer of Callwave Communications, LLC.
`
`Sprint’s Answer to CallWave’s Complaint in CallWave
`Communications, LLC v. Sprint Nextel Corp. and Google, Inc., Civil
`Action No. 1:12-cv-01702-RGA (D. Del.), Docket No. 71.
`
`AT&T’s Answer to CallWave’s Second Amended Complaint in
`CallWave Communications, LLC v. AT&T Mobility, LLC, and
`Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del.), Docket
`No. 76.
`
`T-Mobile’s Answer to CallWave’s Complaint in CallWave
`Communications, LLC v. T-Mobile USA Inc. and Google, Inc., Civil
`Action No. 1:12-cv-01703-RGA (D. Del.), Docket No. 68.
`
`
`-vi-
`
`
`
`Ex. #
`
`2110
`
`2111
`
`2112
`
`2113
`
`2114
`
`2115
`
`2116
`
`2117
`
`2118
`
`2119
`
`
`
`Description
`
`Petitioner’s Opposition to Patent Owner’s Motion for Additional
`Discovery, IPR2014-00199, Paper 33.
`
`Petitioner’s Objections and Responses to CallWave’s Subpoena in
`CallWave Communications, LLC v. AT&T Mobility, LLC, and
`Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del.).
`
`Defendants’ Opening Brief In Support Of Motion To Stay
`Proceedings On The ’970 Patent Pending Inter Partes Review By The
`Patent Trial And Appeal Board, Civil Action No. 1:12-cv-01702-
`RGA (D. Del.), Docket No. 104.
`
`Case Docket as of September 9, 2014, CallWave Communications,
`LLC v. Sprint Nextel Corp. and Google, Inc., Civil Action No. 1:12-
`cv-01702-RGA (D. Del.).
`
`Stipulation and Proposed Order Regarding Service and Extension of
`Time to Respond to Complaint, CallWave Communications, LLC v.
`AT&T Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-
`01701-RGA (D. Del.), Docket No. 8.
`
`Case Docket as of September 9, 2014, CallWave Communications,
`LLC v. T-Mobile USA Inc. and Google, Inc., Civil Action No. 1:12-
`cv-01703-RGA (D. Del.).
`
`September 16, 2014 Hearing Transcript Excerpt, CallWave
`Communications, LLC v. AT&T Mobility, LLC, and Google, Inc.,
`Civil Action No. 1:12-cv-01701-RGA (D. Del.).
`
`August 28, 2014 Hearing Transcript Excerpt, Callwave
`Communications, LLC v. Wavemarket, Inc., Civil Action No.
`14MC80112-JSW (LB) (N.D. Cal.).
`
`Patent Owner’s Proposed Discovery Requests to Petitioner.
`
`September 16, 2014 Hearing Full Transcript, CallWave
`Communications, LLC v. AT&T Mobility, LLC, and Google, Inc.,
`
`-vii-
`
`
`
`Description
`
`Civil Action No. 1:12-cv-01701-RGA (D. Del.).
`
`Case Docket as of January 7, 2015, CallWave Communications, LLC
`v. AT&T Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-
`01701-RGA (D. Del.).
`
`Agreed Protective Order, CallWave Communications, LLC v. Sprint
`Nextel Corp. and Google, Inc., Case No. 1:12-cv-01702-RGA, Docket
`No. 136.
`
`
`
`
`
`
`Ex. #
`
`2120
`
`2121
`
`Ex. #
`
`2122
`
`2123
`
`2124
`
`2125
`
`2126
`
`2127
`
`
`
`NEW EXHIBITS
`
`Description
`
`December 17, 2014 Claim Construction Memorandum Opinion,
`CallWave Communications, LLC v. AT&T Mobility, LLC, and
`Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del.), Docket
`No. 224.
`
`December 8, 2014 Videotaped Deposition Transcript of Craig
`Rosenberg, Ph.D.
`
`Declaration of Dr. Narayan Mandayam In Support of LocatioNet
`Systems, Ltd.’s Patent Owner Response
`
`February 19, 2015 Order, CallWave Communications, LLC v. AT&T
`Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-01701-
`RGA (D. Del.), Docket No. 313.
`
`August 10, 2014 Declaration of Dr. Narayan Mandayam, Exhibit
`2016, IPR2014-00199.
`
`File History of U.S. Patent No. 6,771,970 (re-submitted because
`Petitioner’s Ex. 1111 is a corrupted file)
`
`
`-viii-
`
`
`
`Ex. #
`
`2128
`
`2129
`
`Description
`
`February 6, 2015 Joint Discovery Dispute Letter to the Court and
`Attachments, Callwave Communications, LLC v. Wavemarket, Inc.,
`Civil Action No. 14MC80112-JSW (LB) (N.D. Cal.), Docket No. 63.
`
`February 23, 2015 Order Regarding Callwave and Location Labs’
`Joint Discovery Dispute Letter Dated February 6, 2015, Callwave
`Communications, LLC v. Wavemarket, Inc., Civil Action No.
`14MC80112-JSW (LB) (N.D. Cal.), Docket No. 64.
`
`
`
`
`
`
`
`-ix-
`
`
`
`Pursuant to 37 C.F.R. § 42.107, the Patent Owner, LocatioNet Systems, Ltd.
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`
`(“LocatioNet”) hereby submits its Patent Owner’s Response to the Petition and the
`
`Institution Decision (Paper 11), dated December 16, 2014.
`
`I.
`
`INTRODUCTION
`
`U.S. Pat. No. 6,771,970 (“the ‘970 Patent”) discloses novel and useful
`
`systems and methods for the “extraction of information from multiple tracking
`
`service providers.” Ex. 1101 at 1:61-63. At the time of the invention of the ‘970
`
`Patent, numerous tracking service providers used a variety of technologies to offer
`
`location information regarding mobile platforms (e.g., phones, people, cars, etc.).
`
`Id. at 1:12-21; 3:51-57. “Each service provider collects data using different
`
`technologies and stores this data in its own proprietary format.” Id. at 1:41-43.
`
`Furthermore, “due to the complexity of the underlying systems, communication
`
`with a service provider’s systems is normally made via expensive and complex
`
`client software.” Id. at 1:38-41. Prior to the ‘970 Patent, there was no known
`
`solution that could communicate with different tracking systems using different
`
`tracking technologies and to do so without expensive and complex client software.
`
`Petitioner’s alleged grounds of obviousness based on U.S. Pat. Nos.
`
`6,321,092 (Fitch; Ex. 1105), 6,002,936 (Roel-Ng; Ex. 1107), 6,741,927 (Jones; Ex.
`
`1108), 5,758,313 (Shah; Ex. 1109), and 6,243,039 (Elliot; Ex. 1110), alone or in
`
`combination, fail to render obvious challenged claims 1-17 and 19 of the ‘970
`
`
`
`1
`
`
`
`Patent for numerous reasons: (1) the combination of Fitch and Roel-Ng does not
`
`disclose an element of all the independent claims: “adapted to determine the
`
`location of a respective mobile platform according to a property that is
`
`predetermined for each mobile platform”; (2) the teaching of Roel-Ng is contrary
`
`to the intended purpose and principle of operation of Fitch; (3) Petitioner’s
`
`articulated rationale for a finding of obviousness based on Fitch and Roel-Ng is not
`
`sufficient and refuted by the evidence; (4) the combination of Fitch, Roel-Ng, and
`
`Elliot does not disclose a “map database” as required by dependent claims 2-7, 15,
`
`and 17, and the process of “correlating the location of each mobile platform with a
`
`map database” as required by claims 15 and 17; and (5) the combination of Fitch
`
`and Roel-Ng does not disclose that “each remote tracking system belongs to a
`
`different company and supervises a different group of mobile platforms” as
`
`required by claim 13.
`
`Moreover, this IPR is barred under 35 U.S.C. Section 315(b) because the
`
`evidence demonstrates that Petitioner filed the instant Petition more than one year
`
`after Petitioner’s privies—Sprint, AT&T, and T-Mobile—were served with a
`
`complaint alleging infringement of the ‘970 Patent.
`
`II. ALLEGED GROUNDS
`Petitioner has challenged claims of the ‘970 Patent (Ex. 1101) based on
`
`only, and limited to, the following alleged grounds (see Petition (Paper 3) at 6):
`
`
`
`-2-
`
`
`
`1.
`
`Claims 1-3, 11-14, 16 and 19 are allegedly rendered obvious under 35
`
`U.S.C. §103 over Fitch (Ex. 1106) in view of Roel-Ng (Ex. 1107).
`
`2.
`
`Claim 4 is allegedly rendered obvious under 35 U.S.C. §103 over
`
`Fitch in view of Roel-Ng and Jones (Ex. 1108).
`
`3.
`
`Claim 5 is allegedly rendered obvious under 35 U.S.C. §103 over
`
`Fitch in view of Roel-Ng and Shah (Ex. 1109).
`
`4.
`
`Claims 6-10, 15, and 17 are allegedly rendered obvious under 35
`
`U.S.C. §103 over Fitch in view of Roel-Ng and Elliot (Ex. 1110).
`
`Petitioner challenges claim 1-17 and 19 of the ‘970 Patent, of which claims
`
`1, 14, 16, and 19 are independent.
`
`Independent claim 1 recites a system for location tracking of mobile
`
`platforms, each mobile platform having a tracking unit, the system including: a
`
`location determination system communicating through a user interface with at least
`
`one subscriber; said communication including inputs that include the subscriber
`
`identity and the identity of the mobile platform to be located; a communication
`
`system communicating with said location determination system for receiving said
`
`mobile platform identity; and, a plurality of remote tracking systems
`
`communicating with said communication system each of the remote tracking
`
`systems being adapted to determine the location of a respective mobile platform
`
`according to a property that is predetermined for each mobile platform for
`
`
`
`-3-
`
`
`
`determining the location of the mobile platform; wherein said location
`
`determination system is arranged to determine an appropriate one of the plurality
`
`of remote tracking systems, the appropriate remote tracking system receiving said
`
`mobile platform identity from said communication system and returning mobile
`
`platform location information, said communication system being arranged to pass
`
`said mobile platform location information to said location determination system;
`
`said location determination system being arranged to receive said mobile platform
`
`location information and to forward it to said subscriber.
`
`Claim 2, which depends from claim 1, further recites that said location
`
`determination system communicates with a mapping system having at least one
`
`map database, said mapping system accepting mobile platform location
`
`information, correlating said location information with a location on a map from
`
`said at least one map database, generating a map on which said location is marked
`
`and communicating said map to said location determination system, wherein said
`
`location determination system is arranged to forward said map to said subscriber.
`
`Claim 3, which depends from claim 2, further recites that said mapping
`
`system communicates with at least one location information system, said location
`
`information system accepting mobile platform location information, obtaining
`
`location information and returning said location information for association with
`
`said map.
`
`
`
`-4-
`
`
`
`Claim 4, which depends from claim 3, further recites that said location
`
`information system obtains location information from selected ones of traffic
`
`information systems, electronic Yellow Page databases, video databases, L-
`
`commerce systems and free advertising systems.
`
`Claim 5, which depends from claim 2, further recites that said map database
`
`includes maps formatted as at least one of the following: Raster Map in various
`
`scales, vector maps and air photo.
`
`Claim 6, which depends from claim 2, further recites that said user interface
`
`accepts multiple mobile platforms to be located, the mapping system accepting
`
`multiple mobile platform location information and generating a map on which each
`
`location is marked.
`
`Claim 7, which depends from claim 2, further recites that data forwarded to
`
`said subscriber comprises at least one mobile platform location in a map
`
`represented in HTML and an image.
`
`Claim 8, which depends from claim 1, further recites that the communication
`
`between said subscriber and said location determination system is over the
`
`Internet.
`
`Claim 9, which depends from claim 1, further recites that the communication
`
`between said communication system and the corresponding remote tracking
`
`service is over the Internet.
`
`
`
`-5-
`
`
`
`Claim 10, which depends from claim 1, further recites that said location
`
`determination system, said mapping system and said communication system are
`
`accommodated in the same web site.
`
`Claim 11, which depends from claim 1, further recites that said mobile
`
`platform is a vehicle.
`
`Claim 12, which depends from claim 1, further recites that said mobile
`
`platform is a person.
`
`Claim 13, which depends from claim 1, further recites that each remote
`
`tracking system belongs to a different company and supervises a different group of
`
`mobile platforms.
`
`Independent claim 14 recites a method of determining the location of mobile
`
`platforms, said mobile platforms between them being locatable by a plurality of
`
`remote tracking systems, each which is adapted to determine the location of a
`
`respective mobile platform according to a property that is predetermined for each
`
`mobile platform, the method comprising: (a) accepting inputs from a subscriber
`
`identifying one or more mobile platforms to be located; (b) determining for each
`
`mobile platform one of the remote tracking systems that is capable of locating said
`
`mobile platform; (c) communicating the identity of the one or more mobile
`
`platforms to be located to the determined remote tracking system(s); (d) receiving
`
`
`
`-6-
`
`
`
`the location of each mobile platform from the respective remote tracking system;
`
`and (e) transmitting the location of each mobile platform to said subscriber.
`
`Claim 15, which depends from claim 14, further recites transmitting the
`
`location of each mobile platform further comprises correlating the location of each
`
`mobile platform with a map database and transmitting a map having marked said
`
`mobile platform location(s) to said subscriber.
`
`Independent claim 16 recites a computer program product comprising a
`
`computer useable medium having computer readable program code embodied
`
`therein to enable determination of the location of mobile platforms, said mobile
`
`platforms between them being locatable by a plurality of remote tracking systems,
`
`each which is adapted to determine the location of a respective mobile platform
`
`according to a property that is predetermined for each mobile platform, the
`
`computer readable program product comprising: computer readable program code
`
`for causing a computer to accept inputs from a subscriber identifying one or more
`
`mobile platforms to be located; computer readable program code for causing the
`
`computer to determine for each mobile platform one of the remote tracking systems
`
`that is capable of locating said remote platform; computer readable program code
`
`for causing the computer to communicate the identity of the one or more mobile
`
`platforms to be located to the determined remote tracking system(s); computer
`
`readable program code for causing the computer to receive the location of each
`
`
`
`-7-
`
`
`
`mobile platform from the respective remote tracking system; and computer
`
`readable program code for causing the computer to transmit the location of each
`
`mobile platform to said subscriber.
`
`Claim 17, which depends from claim 16, further recites comprising
`
`computer readable code for causing the computer to correlate the location of each
`
`mobile platform with a map database and to transmit a map having marked said
`
`mobile platform location(s) to said subscriber.
`
`Independent claim 19 recites a program storage device readable by a
`
`machine, tangibly embodying a program of instructions executable by the machine
`
`to perform a method of determining the location of mobile platforms, said mobile
`
`platforms between them being locatable by a plurality of remote tracking systems,
`
`each of which is adapted to determine the location of a respective mobile platform
`
`according to a property that is predetermined for each mobile platform, the
`
`method comprising: (a) accepting inputs from a subscriber identifying one or more
`
`mobile platforms to be located; (b) determining for each mobile platform one of the
`
`remote tracking systems that is capable of locating said mobile platform; (c)
`
`communicating the identity of the one or more mobile platforms to be located to
`
`the determined remote tracking system(s); (d) receiving the location of each mobile
`
`platform from the respective remote tracking system; and (e) transmitting the
`
`location of each mobile platform to said subscriber.
`
`
`
`-8-
`
`
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`In the field of the invention claimed in the ‘970 Patent, a person of ordinary
`
`skill in the art has a bachelor of science in computer science, electrical engineering
`
`or a comparable degree and at least two years of experience and knowledge in
`
`wide area digital communications systems such as cellular, including system level
`
`issues related to active mobile location tracking. Ex. 2124 at ¶12.
`
`IV. CLAIM CONSTRUCTION
`Claim terms are presumed to be given their ordinary and customary meaning
`
`as would be understood by one of ordinary skill in the art at the time of the
`
`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
`
`banc). In an inter partes review, a claim of an unexpired patent is construed using
`
`the “broadest reasonable construction in light of the specification.” 37 C.F.R. §
`
`42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`12, 2012). A claim term is given its ordinary and customary meaning in the
`
`context of the specification as if would be understood by one of ordinary skill in
`
`the art. Phillips, 415 F.3d at 1313; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004). The broadest reasonable construction of the claim
`
`language must take into account any definitions presented in the specification. In
`
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1364 (citing In re Bass, 314 F.3d 575,
`
`577 (Fed. Cir. 2002)). Indeed, the specification “is highly relevant to the claim
`
`
`
`-9-
`
`
`
`construction analysis. Usually, it is dispositive; it is the single best guide to the
`
`meaning of a disputed term.” Phillips, 415 F.3d at 1315. The following claim
`
`limitations should be construed to understand the scope of the claims for review:
`
`“a property that is predetermined for each mobile platform”
`
`A.
`Independent claims 1, 14, 16, and 19 recite the term “a property that is
`
`predetermined for each mobile platform.” Patent Owner submits that this term
`
`should be construed as “a property of a mobile platform determined before a
`
`remote tracking system determines the location of the mobile platform.” This
`
`construction is consistent with the specification of the ‘970 Patent. Ex. 1101 at
`
`4:12-15 (“The location determination system (1) is linked to a user database that
`
`cross-references vehicles and other entities to be tracked with the location tracking
`
`service that is capable of tracking them.”); id. at 5:63-67 (“In FIG. 4a, a request
`
`protocol data unit is shown. The data unit is transmitted by the communication
`
`subsystem (11-14) and includes the field ItemID (200), which contains the
`
`location tracking system’s identifier of the item to be located.”) (emphasis
`
`added); id. at 5:67-6:19 (“The data unit is transmitted from the respective tracking
`
`system (11-14) to the communication subsystem (3) and includes the fields ItemID
`
`(300) and Coord (310).”). In addition, Patent Owner’s proposed construction is
`
`identical to the construction adopted in the related district court proceedings. Ex.
`
`2122 at 8-10; Ex. 2124 at ¶19.
`
`
`
`-10-
`
`
`
`Petitioner does not propose any explicit claim construction for “a property
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`that is predetermined for each mobile platform.” Pet. at 21.
`
`B.
`
`“said location determination system is arranged to determine an
`appropriate one of the plurality of remote tracking systems”
`
`Independent claim 1 recites the term “said location determination system is
`
`arranged to determine an appropriate one of the plurality of remote tracking
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`systems.” Patent Owner submits that this term means the location determination
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`system is arranged to perform the function of determining which one of the remote
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`tracking systems is appropriate for use, and to cause that system to be used. This
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`construction is also proposed by Petitioner. Pet. at 21 (citing Ex. 1104 at 12).
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`“map database”
`
`C.
`Dependent claims 2-7, 15, and 17 recite the term “map database.” Patent
`
`Owner submits that this term should be construed as “a collection of map data that
`
`is organized so that it can easily be accessed, searched, managed, and updated.
`
`This construction is consistent with the specification of the ‘970 Patent. The ‘970
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`Patent discloses a number of map database functions, including correlating
`
`between maps stored in the map database (5) and the positioning information
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`received from the location tracking system (Ex. 1101 at 4:17-22), deriving street
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`names from map databases (id. at 5:45-50), “correlating the location of each
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`remote platform with a map database” (id. at 3:21-25), and “access[ing] said map
`
`database for correlating map to said location information, so as to obtain correlated
`
`
`
`-11-
`
`
`
`location information” (id. at 9:1-3). For instance, the process of “correlating the
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`location of each remote platform with a map database” involves accessing the map
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`database, searching the map database, managing the data in the map database, and
`
`updating the map database. Patent Owner’s proposed construction is also
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`consistent with this ordinary and customary meaning of “map database.” See Ex.
`
`2126 at 12-15.
`
`Petitioner does not propose any explicit claim construction for “map
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`database.” Pet. at 20-22.
`
`“mobile platforms”
`
`D.
`For purposes of this proceeding, Patent Owner does not contest Petitioner’s
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`proposed construction of “mobile platforms,” which is “a mobile device with a
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`tracking unit, e.g., cell phones, and motor vehicles.” Pet. at 20.
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`“a location determination system”
`
`E.
`For purposes of this proceeding, Patent Owner does not contest Petitioner’s
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`proposed construction of “a location determination system,” which is “a
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`centralized computer system that connects to remote tracking systems and
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`subscribers of location information.” Pet. at 20.
`
`“a communication system”
`
`F.
`For purposes of this proceeding, Patent Owner does not contest Petitioner’s
`
`proposed construction of “a communication system,” which is “communication
`
`
`
`-12-
`
`
`
`hardware, software or protocols for receiving and transmitting location information
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`and requests for location information.” Pet. at 20.
`
`“a plurality of remote tracking systems”
`
`G.
`For purposes of this proceeding, Patent Owner does not contest Petitioner’s
`
`proposed construction of “a plurality of remote tracking systems,” which is “more
`
`than one system for determining the location of a mobile device, e.g., GPS (Global
`
`Positioning System) or cellular networks.” Pet. at 21.
`
`H.
`
`“each remote tracking system belongs to a different company and
`supervises a different group of mobile platforms”
`
`Claim 13, which depends from claim 1, recites the term “each remote
`
`tracking system belongs to a different company and supervises a different group of
`
`mobile platforms.” Patent Owner submits that this claim term means each remote
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`tracking system is owned by a different location company and directs or oversees
`
`the performance or operation of a different group of mobile platforms. Patent
`
`Owner’s proposed construction is consistent with the ordinary and customary
`
`meaning of the claim term and the ‘970 Patent specification. Ex. Ex. 1101 at 6:19-
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`31 (“Obviously, the vehicles or entities may be spread among more than one
`
`company (e.g., they may belongs to different groups (21) and (24), each supervised
`
`by a respective different location company).” Petitioner does not propose any
`
`explicit claim construction for “each remote tracking system belongs to a different
`
`company and supervises a different group of mobile platforms.” Pet. at 22.
`
`
`
`-13-
`
`
`
`V. TECHNICAL OVERVIEW OF THE ‘970 PATENT
`The ‘970 Patent is directed to a system and method for location tracking of
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`mobile platforms. Ex. 1101 at Abstract, 2:2-28, 3:4-24. Figure 1 shows a system
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`for location tracking of mobile platforms, such as a mobile phone (21), car (2
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