`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
`___________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO LOCATION LABS’
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,771,970
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`IV.
`
`V.
`
`B.
`
`C.
`
`2.
`
`3.
`
`INTRODUCTION .......................................................................................... 1
`THE PETITION SHOULD BE DENIED BECAUSE IT PRESENTS
`THE SAME PRIOR ART AND THE SAME ARGUMENTS
`PREVIOUSLY REJECTED BY THE BOARD. ........................................... 4
`The Board Should Deny Petitions Based On Previously-Rejected
`A.
`And Cumulative Grounds. .................................................................... 4
`The Petition Is Based On The Same Prior Art The Board
`Considered And Rejected In The First Petition. .................................. 5
`Petitioner Relies On The Same Arguments The Board Considered
`And Rejected In The First Petition. ...................................................... 7
`Petitioner Argues That Fitch Discloses The Claimed
`1.
`“Location Determination System”. ............................................ 7
`Petitioner Previously Made The Same Argument Regarding
`Fitch And The Claimed “Location Determination System”
`To The Board. ............................................................................ 9
`The Board Rejected Petitioner’s Argument And Determined
`That Fitch Fails To Disclose The Claimed “Location
`Determination System”. ........................................................... 11
`III. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT PETITIONER WOULD PREVAIL WITH
`RESPECT TO ANY OF THE CLAIMS AT ISSUE. ................................... 13
`IPR IS BARRED BECAUSE THE PETITION WAS FILED MORE
`THAN ONE YEAR AFTER PETITIONER’S PRIVIES WERE
`SERVED WITH A COMPLAINT ALLEGING INFRINGEMENT. .......... 16
`1.
`Sprint, AT&T, and T-Mobile Are Privies of Petitioner. .......... 16
`2.
`Petitioner Filed The Petition More Than One Year After Its
`Privies Were Served With A Complaint Alleging
`Infringement of The ‘970 Patent. ............................................. 20
`CONCLUSION ............................................................................................. 21
`
`
`
`-i-
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Asahi Glass Co., Ltd. v. Toledo Eng’g Co.,
`505 F. Supp. 2d 423 (N.D. Ohio 2007) .............................................................. 16
`
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ............................................................................ 13
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................... 13
`
`STATUTES
`
`35 U.S.C. § 313 ......................................................................................................... 1
`
`35 U.S.C. § 315(b) ........................................................................................ 3, 16, 20
`
`35 U.S.C. § 325(d) .......................................................................................... 2, 4, 12
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.8(b)(2) ............................................................................................. 18
`
`37 C.F.R. § 42.20(c) ................................................................................................ 13
`
`37 C.F.R. § 42.104(b)(4) ......................................................................................... 13
`
`37 C.F.R. § 42.107 .................................................................................................... 1
`
`37 C.F.R. § 42.108(c) .......................................................................................... 2, 13
`
`77 Fed. Reg. 48756, 48759 ..................................................................................... 17
`
`
`
`
`
`-ii-
`
`
`
`
`
`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.
`
`
`-iii-
`
`
`
`Ex. #
`
`2110
`
`2111
`
`2112
`
`2113
`
`2114
`
`2115
`
`2116
`
`2117
`
`
`
`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.).
`
`
`
`
`-iv-
`
`
`
`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 the following Preliminary Response to the Petition
`
`seeking inter partes review of U.S. Patent No. 6,771,970 (“the ‘970 Patent”). This
`
`filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is being filed
`
`within three months of the mailing date of the Notice of Filing Date Accorded to the
`
`Petition (Paper 5), mailed June 19, 2014.
`
`LocatioNet is the owner of the entire interest in the ‘970 Patent, and thus is a
`
`real party-in-interest. Callwave Communications, LLC (“Callwave”) is an exclusive
`
`licensee of the ‘970 Patent and is also a real party-in-interest.
`
`I.
`
`INTRODUCTION
`The Board previously denied inter partes review of the claims of the ‘970
`
`patent that are the subject of this Petition—claims 1–17 and 19. On November 27,
`
`2013, Wavemarket, Inc. d/b/a Location Labs (“Petitioner” or “Location Labs”) filed a
`
`petition to institute inter partes review of claims 1–19 of the ‘970 patent, and
`
`subsequently filed a corrected petition (“First Petition”). See Ex. 2101. On May 9,
`
`2014, the Board denied all grounds proposed by Location Labs for all challenged
`
`claims, except one ground for claim 18—a claim that is not at issue in this Petition.
`
`See Ex. 2102 at 29. Location Labs then filed a Request for Rehearing seeking
`
`reconsideration of the Board’s Decision, stating: “Petitioner respectfully requests
`
`rehearing of the Board’s Decision of May 9, 2014 (Paper 18; ‘Decision’), to not
`
`
`
`1
`
`
`
`review claims 1–17 and 19, as anticipated or rendered obvious by U.S. Patent No.
`
`6,321,092 to Fitch (‘Fitch’) alone or in combination with other references.” Ex. 2103
`
`at 1. On June 11, 2014, the Board denied Location Labs’ request, rejecting its
`
`arguments because “Petitioner’s newly presented assertions are not supported by
`
`Fitch.” Ex. 2104 at 4.
`
`Unsatisfied with the Board’s decision, Location Labs filed the instant Petition
`
`on June 9, 2014, presenting the same primary reference (Fitch), the same secondary
`
`references (Jones, Shah, and Elliot),1 and the same arguments to the Board. See
`
`IPR2014-00920 (“Pet.”), Paper 3 at 6. In fact, the Petition is premised on the same
`
`arguments that the Board considered and rejected in denying Location Labs’ Request
`
`for Rehearing in the First Petition. Compare Pet. at 22–23 and Ex. 2104 at 2–8. As
`
`such, the issues presented in this Petition are the same or similar to those the Board
`
`has already considered and rejected in denying the First Petition, are redundant and
`
`cumulative under 35 U.S.C. § 325(d), and thus, the Petition should be denied.
`
`Additionally, in order for the Board to grant the Petition, Location Labs must
`
`prove that there is a reasonable likelihood that at least one of the claims challenged in
`
`this Petition is unpatentable. See 37 C.F.R. § 42.108(c). Location Labs has not and
`
`
`1 Location Labs added one secondary reference (Roel-Ng), but barely cites to it.
`
`Pet. at 5–6.
`
`
`
`-2-
`
`
`
`cannot do so. The Petition relies on Fitch to disclose, among other things, the claimed
`
`“location determination system”. But the Board has already considered and rejected
`
`the Petition’s only primary prior art reference—Fitch—because it fails to disclose all
`
`of the required elements of independent claims 1, 14, 16, and 19 of the ‘970 patent,
`
`including the required “location determination system”. See Ex. 2104 at 2–8. Due to
`
`this fatal defect, Location Labs cannot meet its burden to prove that there is a
`
`reasonable likelihood that any of the claims at issue in this Petition are unpatentable.
`
`Finally, an inter partes review (“IPR”) is barred because this Petition was filed
`
`on June 9, 2014—more than one year after the date on which privies of Location Labs
`
`were served with a complaint alleging infringement of the ‘970 patent. See 35 U.S.C.
`
`§ 315(b). Indeed, privies of Location Labs, including Sprint, AT&T, and T-Mobile,
`
`were all served with a complaint alleging infringement of the ‘970 patent as early as
`
`January 29, 2013—well beyond the one-year time bar for filing an IPR petition.
`
`Accordingly, the Board should reject the Petition in its entirety.2
`
`
`2 Should the Board institute proceedings in this matter, Patent Owner does not
`
`concede the legitimacy of any arguments in the Petition that are not specifically
`
`addressed herein. Patent Owner expressly reserves the right to rebut any arguments in
`
`its Patent Owner Response.
`
`
`
`-3-
`
`
`
`II. THE PETITION SHOULD BE DENIED BECAUSE IT PRESENTS THE
`SAME PRIOR ART AND THE SAME ARGUMENTS PREVIOUSLY
`REJECTED BY THE BOARD.
`A.
`
`The Board Should Deny Petitions Based On Previously-Rejected
`And Cumulative Grounds.
`
`The Board has discretion under 35 U.S.C. § 325(d) to reject a petition when the
`
`same or substantially the same prior art or arguments were presented previously in
`
`another proceeding before the Office. The relevant portion of that statute states:
`
`In determining whether to institute or order a proceeding
`under . . . chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same
`or substantially the same prior art or arguments previously
`were presented to the Office.
`
`35 U.S.C. § 325(d). Thus, under Section 325(d), the Board should deny a petition that
`
`challenges a patent based on previously-rejected grounds and cumulative and
`
`duplicative prior art to avoid giving petitioners an unwarranted and unfair advantage
`
`before the Office and in pending patent infringement litigation. Id. Indeed, the
`
`legislative history of Section 325(d) confirms that Congress intended its provision to
`
`prevent “serial challenges” and the resulting burden on patent owners and the Office
`
`in managing multiple proceedings involving the same patent. 157 Cong. Rec. S1041-
`
`42 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl).
`
`Having failed in the First Petition, and having failed in its request for
`
`reconsideration of the Board’s Decision denying IPR of claims 1–17 and 19 of the
`
`
`
`-4-
`
`
`
`‘970 patent, Location Labs should not be allowed to burden the Board and prejudice
`
`Patent Owner with yet another attempt to assert the same previously-rejected prior art
`
`and re-argue positions previously lost. Thus, because the Board has already
`
`considered and rejected Location Labs’ prior art and arguments, the Petition should be
`
`denied.
`
`B.
`
`The Petition Is Based On The Same Prior Art The Board
`Considered And Rejected In The First Petition.
`
`There can be no dispute that the primary reference presented in the Petition
`
`(Fitch, Ex. 1105) is the same prior art reference Location Labs relied upon in the First
`
`Petition. See Ex. 2105. Location Labs previously asked the Board for rehearing of its
`
`institution decision denying IPR of claims 1–17 and 19 based on Fitch alone or in
`
`combination with other references: “Petitioner respectfully requests rehearing of the
`
`Board’s Decision of May 9, 2014 (Paper 18; ‘Decision’), to not review claims 1–17
`
`and 19, as anticipated or rendered obvious by U.S. Patent No. 6,321,092 to Fitch
`
`(‘Fitch’) alone or in combination with other references.” See Ex. 2103 at 1. These
`
`“other references” presented in the First Petition—U.S. Pat. No. 6,741,927 to Jones
`
`(“Jones”), U.S. Pat. No. 5,758,313 to Shah (“Shah”), and U.S. Pat. No. 6,243,039 to
`
`Elliot (“Elliot”)—are all presented again in the Petition. See Ex. 2101 at 5.
`
`Location Labs bases its Petition on the same primary reference (Fitch) and the
`
`same secondary references, including Jones, Shah, and Elliot, that were previously
`
`rejected by the Board. See Pet. at 5–6, Exs. 1105 (Fitch), 1108 (Jones), 1109 (Shah),
`
`
`
`-5-
`
`
`
`and 1110 (Elliot). Armed with the Board’s guidance as to the earlier petition’s flaws
`
`as outlined in the institution decision, and the Board’s Order denying Location Labs’
`
`Request for Rehearing, Location Labs now attempts to recast its prior arguments by
`
`merely supplementing this Petition with a single additional secondary reference to
`
`further combine with the same previously-rejected references. See Pet. at 5–6, Ex.
`
`1107 (Roel-Ng).
`
`Roel-Ng is barely referenced by Location Labs, and based on Location Labs’
`
`own representations, Roel-Ng is merely cumulative and duplicative of the teachings
`
`described in Fitch. See Pet. at 19 (“Thus, at least the MSC of Roel-Ng is analogous to
`
`. . . one or more aspects of the interface disclosed by Fitch discussed above (e.g.,
`
`platform (114; Figure 1), Location Finding System (LFS, 116; Figure 1), Wireless
`
`Location Interface (WLI 224) and Location Manager (LM, 214)).” Moreover,
`
`Location Labs does not explain why the Roel-Ng reference was not included in the
`
`First Petition; it was available to Location Labs at the time of the filing of the First
`
`Petition. As discussed in detail below, the Board previously found that Fitch does not
`
`describe a “location determination system” that is “arranged to determine an
`
`appropriate one of the plurality of remote tracking systems” as set forth in claim 1.
`
`See Ex. 2102 at 17–24; Ex. 2104 at 3–7.
`
`
`
`-6-
`
`
`
`C.
`
`Petitioner Relies On The Same Arguments The Board Considered
`And Rejected In The First Petition.
`
`The Board should decline Location Labs’ attempts to re-argue the same grounds
`
`and arguments that the Board rejected in the First Petition. While Location Labs now
`
`presents combinations of references slightly different from those in the First Petition
`
`by introducing a single reference to each previously-rejected combination, the Petition
`
`is premised on the same primary reference. Its grounds are based on the same alleged
`
`teachings and the same faulty reasoning for the alleged invalidation of the challenged
`
`claims. See Pet. at 5–6.
`
`1.
`
`Petitioner Argues That Fitch Discloses The Claimed “Location
`Determination System”.
`
`In the Petition, Location Labs relies on Fitch to describe the “location
`
`determination system” element recited in claim 1 of the ‘970 patent: “Fitch discloses
`
`a location determination system, e.g., LFS 116, LM 116, or LM 214, LFS 214,
`
`comprising a number of elements or system nodes working together to determine the
`
`location of wireless stations. . . .”3 Pet. at 22–23, and 41. Claim 1, reproduced below,
`
`is illustrative of the claims at issue (emphasis added):
`
`3 As discussed below, the Board previously determined that the independent
`
`method claims 14, 16, and 19 of the ‘970 patent require a “determining” step that is
`
`“tied to the structures recited in claim 1,” including the “location determination
`
`system” element. See Ex. 2104 at 7–8.
`
`
`
`-7-
`
`
`
`1. 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 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;
`
`
`
`-8-
`
`
`
`said location determination system being arranged to receive
`said mobile platform location information and to forward it
`to said subscriber.
`
`None of the secondary references—Jones, Shah, Elliot, or Roel-Ng—relied upon by
`
`Location Labs in the Petition address the “location determination system”
`
`requirement. Indeed, Location Labs’ repeated reliance on Fitch as the primary
`
`reference for all of its arguments dooms this Petition as it did the First Petition.
`
`2.
`
`Petitioner Previously Made The Same Argument Regarding
`Fitch And The Claimed “Location Determination System” To
`The Board.
`
`In the First Petition, Location Labs similarly argued that Fitch discloses a
`
`“location determination system” comprising a number of elements “working together”
`
`to determine the location of wireless stations, including the LFS 116, LM 116, or LM
`
`214, LFS 214, among other things: “Fitch teaches a ‘location determination system’
`
`as platform 114, which includes location finding system/location manager (LFS/LM)
`
`(116/224), which works together with wireless location applications (118 and 226–
`
`230) and wireless location interface (WLI) (224) (Req. Reh’g 2–8). . . .” See Ex. 2104
`
`at 2–3 (emphasis added); see also Ex. 2103 at 6–7 (“The Petition made clear that
`
`neither the LFS/LM (116/214) nor the wireless location-based applications (118 and
`
`226–230) alone selectively prompts the LFEs. [First] Petition, p. 16. Instead, as
`
`pointed out in the [First] Petition, the LFS/LM (116/214) works together with wireless
`
`
`
`-9-
`
`
`
`location-based applications (118 and 226-230) and WLI (224) (as part of platform
`
`114) to selectively prompt the LFEs.”) (emphasis in original).
`
`Location Labs not only advances the same argument in both the First Petition
`
`and the instant Petition, but it also cites to and relies upon the same disclosure in Fitch
`
`to do so. In support of its argument in the First Petition, Location Labs cited to and
`
`relied upon the following disclosure in Fitch to allegedly teach the claimed “location
`
`determination system”:
`
`Referring again to FIG. 2, the illustrated system 200
`includes a wireless location interface (WLI) 224 that allows
`wireless location applications 226, 228 and 230 to
`selectively access information stored in the LC 220 or
`prompt one or more of LFEs 202, 204 and/or 206 to initiate
`a location determination. The WLI 224 provides a standard
`format for submitting location requests to the LM 214 and
`receiving responses from the LM 214 independent of the
`location finding technology(ies) employed. In this manner,
`the applications can make use of the best or most
`appropriate location information available originating from
`any available LFE source without concern for LFE
`dependent data formats or compatibility issues.
`
`Ex. 2103 at 6. It is no surprise, therefore, that Location Labs cites to and relies upon
`
`the identical disclosure in Fitch to make the same argument in the instant Petition. See
`
`Pet. at 22–23.
`
`
`
`-10-
`
`
`
`3.
`
`The Board Rejected Petitioner’s Argument And Determined
`That Fitch Fails To Disclose The Claimed “Location
`Determination System”.
`
`Location Labs presented its argument in its Request for Rehearing in the First
`
`Petition, the Board considered it in view of the disclosure in Fitch, and the Board
`
`unequivocally rejected Location Labs’ argument. Specifically, the Board determined
`
`that Fitch does not teach the claimed “location determination system”. As stated by
`
`the Board, “Petitioner’s newly presented assertions are not supported by Fitch. In
`
`particular, Location Labs’ assertion that wireless location applications 226, 228, and
`
`230, WLI 224, and LFS or LM 214, depicted in Figure 2, are resident on platform
`
`114, depicted in Figure 1, and ‘cooperate’ or ‘work together’, is not supported by
`
`Fitch’s disclosure.” Ex. 2104 at 4–5. The Board further found that Location Labs’
`
`argument was inconsistent with the disclosure in Fitch: “Contrary to Petitioner’s
`
`assertions, Fitch is silent regarding WLAs 226, 228, and 230, and WLI 224 being
`
`resident on a platform 114, or any other platform that includes LFS or LM 214. At
`
`best, Fitch discloses that it is the overall location-based services system 200, which
`
`includes wireless location interface 224 and wireless location applications 226, 228,
`
`230.” Id. at 6.
`
`Moreover, in rejecting Location Labs’ argument, the Board also determined that
`
`the failure of Fitch to disclose the “location determination system” recited in claim 1
`
`applies to all of the independent claims, including method claims 14, 16, and 19. See
`
`
`
`-11-
`
`
`
`Ex. 2104 at 7–8; Ex. 2102 at 22–23. For example, among other steps, method claims
`
`14, 16, and 19 require “determin[ing] for each mobile platform one of the remote
`
`tracking systems that is capable of locating said mobile platform”. See, e.g., Pet., Ex.
`
`1101, claims 14, 16, and 19. The Board held that the “determining” step of method
`
`claims 14, 16, and 19 is tied to the structures recited in claim 1: “Although we agree
`
`with Petitioner that the determining step itself does not need to be tethered to specific
`
`structure or hardware (See Req. Reh’g 9), the determining step is otherwise tied to the
`
`structures recited in claim 1. The determining step is performed ‘for each mobile
`
`platform’ and is utilized to ascertain ‘one of the remote tracking systems capable of
`
`locating said mobile platform.’” Ex. 2104 at 7; see also Ex. 2102 at 22–23. As such,
`
`Fitch fails to disclose an essential element required by all of the independent claims,
`
`and thus all of the claims at issue—i.e., the “location determination system”. See Pet.
`
`at 22–23.
`
`The Board’s prior consideration of Location Labs’ arguments, its analysis of the
`
`teachings of Fitch, as well as its decision rejecting Location Labs’ arguments in the
`
`First Petition and rehearing request are all fatal to the instant Petition. Accordingly,
`
`the Board should decline Location Labs’ attempts to re-argue the same previously-
`
`rejected grounds and prior art, and deny the Petition under 35 U.S.C. § 325(d).
`
`
`
`-12-
`
`
`
`III. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT PETITIONER WOULD PREVAIL WITH
`RESPECT TO ANY OF THE CLAIMS AT ISSUE.
`
`Location Labs has the burden of proof to establish that it is entitled to its
`
`requested relief. 37 C.F.R. § 42.20(c). Here, Location Labs must demonstrate a
`
`reasonable likelihood that the ‘970 patent claims at issue would have been
`
`unpatentable in view of the art cited in the Petition. See 37 C.F.R. § 42.108(c). In
`
`addition, Location Labs “must specify where each element of the claim is found in the
`
`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`Even though each of Location Labs’ proposed grounds is based on the alleged
`
`obviousness of the challenged claims, Location Labs has not and cannot meet its
`
`burden because the Petition relies on Fitch to disclose that which the Board has
`
`already determined that it does not disclose. Pet. at 6 and 22–23; see Ex. 2104 at 3–8 .
`
`The black-letter law is clear: “[T]here must be some articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988
`
`(Fed. Cir. 2006)); see also In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995)
`
`(requiring a “searching comparison of the claimed invention – including all its
`
`limitations – with the teachings of the prior art”). Here, there is none.
`
`In an effort to address the deficiencies of Fitch, Location Labs introduces the
`
`Roel-Ng reference in combination with Fitch. See Pet. at 24–25, 30–31, 34–35, and
`
`
`
`-13-
`
`
`
`38–39. Roel-Ng, however, fails to cure the deficiencies because it too does not
`
`disclose the claimed “location determination system” that is “arranged to determine an
`
`appropriate one of the plurality of remote tracking systems”.4 According to Location
`
`Labs, Roel-Ng merely teaches that “the MPC 370 must choose the optimum
`
`positioning method available” within a cellular system, such as “Timing Advance
`
`(TA) method, Time of Arrival (TOA) method, or Angle of Arrival (AOA) method, or
`
`terminal-based, e.g., Global Positioning System (GPS) method, Observed Time
`
`Difference (OTD) method, or Enhanced OTD method)”. Pet. at 18 (quoting Roel-Ng)
`
`(emphasis added). Indeed, choosing “the optimum positioning method available”
`
`within a cellular system does not teach the claimed limitation.
`
`Contrary to Roel-Ng, however, the claims at issue require determining the
`
`appropriate “remote tracking system” from a plurality of remote tracking systems—
`
`not choosing “the optimum positioning method available” within a cellular system.
`
`See Pet., Ex. 1101 at 3:40–57 (citing examples of location tracking systems); see also
`
`Pet. at 21. According to Location Labs, a “remote tracking system” is a “system for
`
`determining the location of a mobile device, e.g., GPS (Global Positioning System) or
`
`cellular networks”. Id. (emphasis added). As a result, based on Location Labs’ own
`
`
`4 As discussed above, the “determining” step of method claims 14, 16, and 19 is
`
`tied to the structures recited in claim 1.
`
`
`
`-14-
`
`
`
`construction, the combination of Fitch and Roel-Ng fails to render obvious claims 1-3,
`
`11-14, and 19.
`
`Location Labs’ argument combining the teachings of Fitch and Roel-Ng is
`
`simply an attempt to assert a position that it could have raised but failed to raise in the
`
`First Petition. Pet. at 42–48. Specifically, Location Labs argues that based on the
`
`teaching of Roel-Ng “it would have been obvious to a person of ordinary skill to move
`
`Fitch’s prompting of the LFE from the wireless location application to the LFS/LM,
`
`as the LFS/LM contains the LC and all of the information concerning the LFEs”. Id.
`
`at 42. But, as the Board found in the First Petition, “Petitioner does not assert that
`
`Fitch’s LFS 116, LM 116, LM 214, or LFS 214 includes the functionality of wireless
`
`location applications 226, 228, and 230.” Ex. 2102 at 22; see also Ex. 2104 at 6–7.
`
`Now, Location Labs concedes that Fitch’s LFS 116, LM 116, LM 214, or LFS
`
`214 does not include the functionality of wireless applications 226, 228, and 230, but
`
`instead, alleges that the LFS/LM of Fitch can somehow be modified based on the
`
`teaching of Roel-Ng to incorporate the functionality of the wireless location
`
`application. Location Labs’ attorney argument is misplaced. Indeed, Location Labs’
`
`proposed re-design of the system described in Fitch is not only unsupported and
`
`speculative, but it would also fundamentally alter its architecture, functionality, and
`
`operation.
`
`
`
`-15-
`
`
`
`Thus, because Location Labs cannot meet its burden to prove that there is a
`
`reasonable likelihood that any of the claims challenged in this Petition are
`
`unpatentable, the Petition should be denied.
`
`IV.
`
`IPR IS BARRED BECAUSE THE PETITION WAS FILED MORE
`THAN ONE YEAR AFTER PETITIONER’S PRIVIES WERE SERVED
`WITH A COMPLAINT ALLEGING INFRINGEMENT.
`
`The Petition should be dismissed under 35 U.S.C. § 315(b) because the
`
`undisputed facts demonstrate that the Petition was filed more than one year after
`
`Location Labs’ privies were served with a complaint alleging infringement of the ‘970
`
`patent. The language of Section 315(b) is clear (emphasis added):
`
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the
`date on which the petitioner . . . or privy of the petitioner is
`served with a complaint alleging infringement of the patent.
`
`Here, Location Labs filed the Petition on June 9, 2014—more than one year after its
`
`privies, Sprint Nextel Corp. (“Sprint”), AT&T Mobility, LLC (“AT&T”), and T-
`
`Mobile USA, Inc. (“T-Mobile”), were each served with a complaint alleging
`
`infringement of the ‘970 patent. Thus, the Petition is barred under Section 315(b).
`
`Sprint, AT&T, and T-Mobile Are Privies of Petitioner.
`
`1.
`The undisputed factual record demonstrates that Sprint, AT&T, and T-Mobile
`
`are privies of Location Labs. Asahi Glass Co., Ltd. v. Toledo Eng’g Co., 505 F. Supp.
`
`2d 423, 438 (N.D. Ohio 2007) (finding privity based on an indemnification
`
`
`
`-16-
`
`
`
`agreement, retention of shared counsel, and a joint defense agreement). As noted in
`
`the Trial Practice Guide, [t]he notion of ‘privy’ is more expansive, encompassing
`
`parties that do not necessarily need to be identified in the petition as a ‘real party-in-
`
`interest.’” 77 Fed. Reg. 48756, 48759.
`
`Sprint, AT&T, and T-Mobile are privies of Location Labs based on a number of
`
`undisputed facts: (1) Sprint, AT&T, and T-Mobile are all customers (“the
`
`Customers”) of Location Labs; (2) each of the Customers was served with a complaint
`
`alleging infringement of the ‘970 patent and is currently involved in related district
`
`court litigation controlled by Location Labs; (3) Location Labs and the Customers are
`
`all represented by counsel from the same law firm; (4) indemnification and joint
`
`
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