Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
` Entered: December 16, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`Paper 11
` Entered: December 16, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`I. INTRODUCTION
`A. Background
`Wavemarket, Inc. d/b/a Location Labs (“Petitioner”) filed a Petition
`(Paper 3, “Petition” or “Pet.”) to institute inter partes review of claims 1–17
`and 19 (“the challenged claims”) of U.S. Patent No. 6,771,970 B1 (Ex. 1101,
`“the ’970 Patent”). See 35 U.S.C. § 311. LocatioNet Systems Ltd. (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We
`determine under 35 U.S.C. § 314(a), and based on the record before us, there
`is a reasonable likelihood that Petitioner would prevail with respect to claims
`1–17 and 19.
`
`B. Related Proceedings
`On November 27, 2013, Petitioner filed a Petition (“the ’199 Petition”
`or “’199 Pet.”) for inter partes review of claims 1–19 of the ’970 Patent
`(Case IPR2014-00199, Paper 6). Pet. 1–2; Paper 7, 2. On May 9, 2014, we
`instituted inter partes review of claim 18 of the ’970 Patent. Case IPR2014-
`00199 (Paper 18, “’199 Decision” or “’199 Dec.”); see Pet. 1–2; Paper 7, 2.
`With this Petition, Petitioner filed a Motion for Joinder (Paper 4), seeking to
`join these proceedings with the proceedings of IPR2014-00199. A decision
`on Petitioner’s Motion for Joinder is entered concurrently with this Decision.
`Paper 13.
`Petitioner indicates that the ’970 Patent is the subject a Request for ex
`parte Reexamination (Control No. 90/013,370) filed October 13, 2014.
`Paper 9, 2. Petitioner also indicates the ’970 Patent is at issue in the
`following actions (Pet. 2, Paper 7, 1–2):
`(1) CallWave Commc’ns, LLC v. AT&T Mobility, LLC, No. 1:12-cv-
`01701 (D. Del.);
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`Patent 6,771,970 B1
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`(2) CallWave Commc’ns, LLC v. Sprint Nextel Corp., No. 1:12-cv-01702
`(D. Del.);
`(3) CallWave Commc’ns, LLC v. T-Mobile USA Inc., No.1: 12-cv-01703
`(D. Del.);
`(4) CallWave Commc’ns, LLC v. Verizon Commc’ns Inc., No. 1:12-cv-
`01704 (D. Del.); and
`(5) CallWave Commc’ns, LLC v. AT&T Mobility LLC, No. 1:12-cv-01788
`(D. Del.).
`
`C. The ’970 Patent (Ex. 1101)
`The ’970 Patent relates to a system and method for location tracking
`of mobile platforms. Ex. 1101, Abs.; col. 2, ll. 2–28; col. 3, ll. 4–24.
`Figure 1 of the ’970 Patent is reproduced below:
`
`
`Figure 1 illustrates mobile platforms, including mobile telephone 21,
`
`car 22, laptop 23, and briefcase 24, and location tracking systems 11, 12, 13,
`14 that communicate with communication subsystem 3 of location
`determination system 1. Ex. 1101, col. 3, ll. 31–32; col. 3, l. 44–col. 4, l. 11.
`Location determination system 1 is linked to database 2 and map server 4
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`Patent 6,771,970 B1
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`that accesses map database 5. Id. at col. 4, ll. 12–22. Location
`determination system 1 hosts website 50 on Internet 30. Id. at col. 4, ll. 23–
`28. A subscriber to location determination system 1, and equipped with
`computer 60 running an internet browser, logs on to website 50 and selects
`mobile platform 21–24 for which the location is sought. Id. at col. 4, ll. 29–
`39. The request is passed to location determination system 1, which
`accesses database 2 to determine the appropriate location tracking system
`(11–14) for locating the subscriber-selected mobile platform. Id. at col. 4, ll.
`39–42; see id. at col. 4, ll. 12–15. The request and the details of the
`appropriate location tracking system (11–14) then are passed to
`communication subsystem 3. Id. at col. 4, ll. 42–45. The respective location
`tracking system 11–14 receives the request from communication subsystem
`3, determines the location of the requested mobile platform, and transmits
`the location information back to communication subsystem 3. Id. at col. 4,
`ll. 46–52; see id. at col. 5, l. 51–col. 6, l. 11. Communication subsystem 3
`associates the location information with the request and passes it to location
`determination system 1, which passes the location of the requested mobile
`platform 21–24 to map server 4. Id. at col. 4, ll. 52–56. Map server 4, using
`a map engine, obtains a map of the area in which the requested mobile
`platform 21–24 is located, marks the position of the mobile platform on the
`map, and passes it to location determination system 1. Id. at col. 4, ll. 56–
`59. The map then is passed to the web browser running on subscriber’s
`computer 60. Id. at col. 4, ll. 60–61; see id. at col. 5, ll. 19–24.
`
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`Patent 6,771,970 B1
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`D. Illustrative Claim
`Claims 1, 14, 16, and 19 are independent claims. Claims 2–13 depend
`
`from claim 1, claim 15 depends from claim 14, and claim 17 depends from
`claim 16. Claim 1, reproduced below, is illustrative of the claims at issue
`(emphasis added):
`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;
`said location determination system being arranged to
`receive said mobile platform location information and to
`forward it to said subscriber.
`
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`Case IPR2014-00920
`Patent 6,771,970 B1
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`E. Asserted Grounds of Unpatentability
`Petitioner contends the challenged claims are unpatentable under
`
`35 U.S.C. § 103(a) on the following specific grounds (Pet. 6–7):
`References1
`Claim(s) Challenged
`1–3, 11–14, 16, and 19
`Fitch and Roel-Ng
`4
`Fitch, Roel-Ng, and Jones
`5
`Fitch, Roel-Ng, and Shah
`6–10, 15, and 17
`Fitch, Roel-Ng, and Elliot
`
`
`
`II. ANALYSIS
`A. 35 U.S.C. § 315(b) Time Bar Based on Privity.
`Patent Owner asserts the Petition should be dismissed under 35 U.S.C.
`§ 315(b) because it was filed more than one year after Petitioner’s privies
`were served complaints alleging infringement of the ’970 Patent. Prelim.
`Resp. 16; see id. at 20–21. Patent Owner asserts that Sprint, AT&T, and T-
`Mobile are privies of Petitioner for the following reasons: (1) Sprint,
`AT&T, and T-Mobile are all customers (“the Customers”) of Petitioner; (2)
`each of the Customers was served with a complaint alleging infringement of
`the ’970 Patent and is involved currently in related district court proceedings
`controlled by Petitioner; (3) Petitioner and the Customers all are represented
`by counsel from the same law firm; (4) indemnification and joint defense
`agreements exist between Petitioner and each of the Customers; and (5) each
`of the Customers has a direct interest in the outcome of the Petition. Id. at
`
`1 The Petition relies on the following references: U.S. Patent No. 6,321,092
`B1 (Ex. 1105) (“Fitch”); U.S. Patent No. 6,002,936 (Ex. 1107) (“Roel-Ng”);
`U.S. Patent No. 6,741,927 B2 (Ex. 1108) (“Jones”); U.S. Patent No.
`5,758,313 (Ex. 1109) (“Shah”); and U.S. Patent No. 6,243,039 B1 (Ex.
`1110) (“Elliot”). The Petition also relies on the Declaration of Dr. Scott
`Hotes (Ex. 1116).
`
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`16–17 (citing Asahi Glass Co., Ltd. v. Toledo Engineering Co. Inc., 505 F.
`Supp.2d 423, 434 (N.D. Ohio 2007), as persuasive authority for finding
`privity based on an indemnification agreement, retention of shared counsel,
`and a joint defense agreement); see id. at 18–20.
`Patent Owner asserts that Petitioner has control over this Petition, and
`has control over the defense of the Customers in the district court cases.
`Prelim. Resp. 18 (citing Ex. 2116, 5 for a representation of an “acceptance of
`the defense by [Petitioner]”). Patent Owner also contends that the
`Customers and Petitioner are all represented by counsel from the same law
`firm––Dentons US LLP. Id. (citing Ex. 2107, 17; Ex. 2108, 14; Ex. 2109,
`11). Patent Owner contends that Mark Hogge of Dentons is litigation
`counsel for Sprint and T-Mobile and lead counsel for Petitioner for this
`Petition, and Kirk Ruthenberg of Dentons is counsel for both Petitioner and
`for Sprint and T-Mobile. Id. (citing Ex. 2107, 17; Ex. 2109, 11; Ex. 2111, 1;
`Ex. 2116, 2, ll. 6–8, 13–15). Patent Owner further contends that Petitioner
`has admitted to the existence of an indemnitee-indemnitor relationship
`between the Customers and Petitioner. Id. at 19 (citing Ex. 2110, 10–11; Ex.
`2117, 17, ll. 1–4). Last, Patent Owner alleges that Petitioner has admitted
`that it has entered into joint defense agreements and/or common interest
`agreements with the Customers. Id. (citing Ex. 2111, 12–15 (for objections
`to requests for documents as protected by joint defense privilege, common
`interest privilege), 26–27 (for lack of denial regarding the existence of a
`joint defense agreement in response to document requests seeking joint
`defense agreements)).
`The plain language of 35 U.S.C. § 315(b) precludes institution if the
`petition is filed “more than 1 year after the date on which the . . . privy of the
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`Patent 6,771,970 B1
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`petitioner is served with a complaint.” “Whether a party who is not a named
`participant in a given proceeding nonetheless constitutes a ‘real party-in-
`interest’ or ‘privy’ to that proceeding is a highly fact-dependent question.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`2012) (citing Taylor v. Sturgell, 553 U.S. 880, 894 (2008)). One important
`consideration is whether a non-party exercises, or could have exercised,
`control over a party’s participation in the proceeding. Id. Patent Owner
`does not provide evidence sufficient to demonstrate that Petitioner exercised
`control or could have exercised control over Sprint’s, AT&T’s, and T-
`Mobile’s participation in the respective district court proceedings. For
`example, Patent Owner does not provide evidence sufficient to demonstrate
`that, at the time that Sprint, AT&T, and T-Mobile were served respectively
`with complaints in 2012, Sprint, AT&T, T-Mobile, and Petitioner were
`represented by counsel from Dentons. See Ex’s. 2107, 2108, 2109; 2111,
`2116, 2117 (each document is dated in 2014). Similarly, Patent Owner does
`not provide evidence sufficient to demonstrate that Petitioner, at the time of
`service of the complaints, exercised control or could have exercised control
`over the proceedings based on the indemnitee-indemnitor relationships. See
`Ex’s. 2110, 2117. We are also not persuaded that Petitioner’s objections to
`document requests based on joint defense privilege and common interest
`privilege, along with a failure to deny the existence of joint defense
`agreements, is tantamount to an admission of the existence of joint defense
`agreements and/or common interest agreements. See Ex. 2111, 12–15, 26–
`27. Moreover, we are not persuaded, on this record, that that Petitioner
`exercised control or could have exercised control over Sprint’s, AT&T’s,
`and T-Mobile’s later participation in the respective district court proceedings
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`based on the existence of indemnitee-indemnitor relationships, the
`“acceptance of the defense by [Petitioner],” and retention of counsel from
`Dentons by Petitioner, Sprint, AT&T, and T-Mobile.
`
`Accordingly, we determine that based on the evidence presented at
`this stage of the proceeding, 35 U.S.C. § 315(b) does not bar institution of
`inter partes review.
`B. 35 U.S.C. § 325(d) Discretion to Reject the Petition
`In Case IPR2014-00199, Petitioner asserted several grounds of
`
`unpatentability, relying on Fitch, Jones, Shah, and Elliott, whereas, in this
`Petition, Petitioner asserts several grounds of unpatentability based on Fitch,
`Roel-Ng, Jones, Shah, and Elliot. Compare ’199 Pet. 4–5, with Pet. 5–7. In
`the ’199 Decision, we determined that Petitioner had not shown sufficiently
`that Fitch describes the “location determination system is arranged to
`determine an appropriate one of the plurality of remote tracking systems,” as
`recited in claim 1, and similarly recited in independent claims 14, 16, and
`19. ’199 Dec. 21–23. In this Petition, Petitioner relies on the combined
`teachings of Fitch and Roel-Ng for teaching the limitation not disclosed by
`Fitch alone. Pet. 14, 24–26, 30–31, 34–35, 38–48; see Paper 4, 5. Patent
`Owner argues that we should exercise our discretion under 35 U.S.C. §
`325(d) to reject the Petition because it is based on the same prior art and
`arguments that were considered and rejected in the ’199 Petition. Prelim.
`Resp. 4–12; see id. at 15.
`In determining whether to institute an inter partes review, “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). The statutory language
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`Patent 6,771,970 B1
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`gives the Director the authority not to institute review on the basis that the
`same or substantially the same prior art or arguments were presented
`previously to the Office, but does not require that result. Roel-Ng, and the
`specific combination of Fitch and Roel-Ng, and Fitch, Roel-Ng, and other
`prior art asserted by Petitioner in this Petition, were not considered in the
`’199 Petition. Furthermore, we determine that Petitioner’s arguments
`regarding the combined teachings of Fitch and Roel-Ng are persuasive, as
`explained herein. Therefore, we do not exercise our discretion to deny the
`Petition under 35 U.S.C. § 325(d).
`C. Claim Construction
`We interpret claims in an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification. See 37 C.F.R.
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,766.
`
`Petitioner presents explicit constructions for the following claim terms
`and phrases: “mobile platforms,” “a location determination system,”
`“a communication system,” and “a plurality of remote tracking systems.”
`Pet. 20–21. Patent Owner does not provide any explicit claim constructions.
`See Prelim. Resp. 1–21. For purposes of this Decision, no explicit
`construction is necessary for the aforementioned claim terms and phrases.
`
`Petitioner also asserts that “said location determination system is
`arranged to determine an appropriate one of the plurality of remote tracking
`systems” means the location determination system is arranged to perform the
`function of determining which one of the remote tracking systems is
`appropriate for use, and to cause that system to be used. Pet. 21 (citing ’199
`Dec. 12). Patent Owner does not dispute this claim construction at this time.
`See Prelim. Resp. 1–21. We agree with, and adopt Petitioner’s claim
`
`10
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`consstruction beecause it iss consistennt with the
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`’970 Patennt Specific
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`ation. Seee
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`Casee IPR2014--00920
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`Patennt 6,771,9770 B1
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`Ex. 11101, col. 4, ll. 37–5
`5.
`All othe
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`icitly for ppurposes off this Decission.
`expl
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`D. Unpaatentabilityy over Fitcch and Roeel-Ng
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`Petitioneer contend
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`s that claimms 1–3, 11
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`–14, 16, annd 19 are
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`unpaatentable uunder 35 U.S.C. § 1033(a) as obvvious over
`Fitch and
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`Pet. 6, 22–47.
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`r terms in tthe challennged claimms need nott be construued
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`Roel-Ng.
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`05)
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`1. Fitcch (Ex. 110
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`scribes a mmethod andd apparatuss for using
`Fitch de
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` multiple LLocation
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`Findding Equipmment (LFEE) inputs too enhance llocation innformation
`made
`05, Abs.;
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`availlable to wiireless locaation-basedd applicatioons (WLAAs). Ex. 11
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`col. 2, ll. 23–266.
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`Figure 1 of Fitch iss reproducced below:
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`network 1000,
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` illustratess wireless ttelecommuunications
`Figure 1
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`incluuding mobile switching center ((MSC) 1122 for use inn routing wwireless
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`commmunicationns to or froom wirelesss stations
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`102, netwoork platformm 114 for
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`11
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`locattion findinng technoloogies such as angle off arrival (AAOA), timee differencce
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`l. 1, ll. 47––51; col. 5,,
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`subscriber
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`impllementing
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`
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`or networrk service ffunctions, aand LFEs
`104, 106,
`Ex. 1105,
` Network
` and 110.
`108,
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`col. 4, ll. 338–40; col
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`. 4, l. 64–ccol. 5, l. 5.
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`platfform 114 iss used to ruun Locatioon Managerr (LM) 1166 (also refeferred to as
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`6) and a nuumber of WWLAs 1188. Id. at col
`l.
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`Locaation Findiing Systemm (LFS) 11
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`5, ll. 6–17. LFFEs 104, 1006, 108, annd 110 mayy employ aany of a vaariety of
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`of arrrival (TDOOA), globaal positioniing systemm (GPS), annd the use oof
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`cell/sector locaation. Id. aat col. 5, ll.. 19–22; seee id. at co
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`l. 244–col. 6, l. 18; col. 6, l. 40–col. 7, l. 29; Fiigs. 3a–3e.
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` LFE systtems 104,
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`106, 108, and 1110 may be the samee as or diffeferent fromm one anothher. Id. at
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`col.
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`5, ll. 22–244. LM 1166 (or LFS 116) receivves locatioon informattion from
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`varioous LFEs 1104, 106, 1108, and 1110 and pro
`cesses the
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`location innformationn
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`to prrovide locaation outpuuts for use bby any of vvarious WWLAs 118 (
`e.g., 911,
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`vehicle trackinng) in respoonse to location requeests from tthe WLAs.. Id. at coll.
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`6, ll. 19–29.
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`Figure 22 of Fitch iss reproducced below:
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`Figure 2 illustrates location-based services system 200, including LM
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`214 (also referred to as LFS 214), which operates to receive inputs from
`multiple LFEs 202, 204, and 206, and provide location outputs to multiple
`WLAs 226, 228, and 230. Ex. 1105, col. 4, ll. 41–43; col. 6, ll. 30–35.
`LFEs 202, 204, and 206 may be based on different technologies, and may
`provide different types of location information, in different data formats with
`different accuracies based on the different signals. Id. at col. 6, ll. 35–39;
`see id. at col. 1, ll. 47–51; col. 5, l. 24–col. 6, l. 18; col. 6, l. 40–col. 7, l. 29;
`Figs. 3a–3e. Each of LFEs 202, 204, and 206 output location information to
`its respective LFC2 208, 210, and 212, which collect and aggregate raw
`location information data into a standard format, and send the data to
`location cache (LC) 220 of LM 214 (or LFS 214) for storage. Id. at col. 7,
`ll. 31–33, 42–44, 56–57; col. 8, ll. 23–24. Wireless location interface (WLI)
`224 allows WLAs 226, 228, and 230 (e.g., vehicle tracking) to access
`selectively information stored in LC 220, or prompt one or more of LFEs
`202, 204, and/or 206 to initiate a location determination. Id. at col. 10, ll.
`58–63; see Figs. 7, 8; col. 11, l. 58–col. 12, l. 31. WLI 224 provides a
`standard format for submitting location requests to LM 214 (or LFS 214)
`and receiving responses from LM 214 (or LFS 214) independent of the
`location finding technologies employed. Id. at col. 10, ll. 63–66. “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.”
`
`
`2 Fitch does not provide a meaning of the acronym LFC. Resolving the
`meaning of LFC is not essential to this Decision.
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`Id. at col. 10, l. 66–col. 11, l. 3. System 200 also includes Geographic
`Information System (GIS) based module 222 for correlating geographic
`coordinate information to mapping information. Id. at col. 12, ll. 57–67.
`2. Roel–Ng (Ex. 1107)
`Roel-Ng discloses a telecommunication system and method that
`
`allows a cellular network to determine the optimum positioning method,
`having knowledge of all available network-based and terminal-based
`positioning methods. Ex. 1107, Abs.; col. 3, ll. 53–57. In order for a
`network to be flexible enough to select the best positioning method on a case
`by case situation, it is necessary for the network to have knowledge of the
`positioning capabilities of all involved nodes, network-based and mobile
`station-based (i.e., terminal-based). Id. at col. 3, ll. 29–33. Based on all
`available positioning methods, a Mobile Positioning Center (MPC) has the
`ability to select either a network-based positioning method or a terminal-
`based positioning method after all input factors, such as quality of service,
`have been considered. Id. at col. 3, ll. 33–42.
`
`Figure 3 of Roel-Ng is reproduced below:
`
`
`Figure 3 illustrates Requesting Application (RA) 380, Mobile Station (MS)
`300, MPC 370, Mobile Switching Center/Visitor Location Register
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`(MSC/VLR) 350, Base Station Controller (BSC) 340, and Base Transceiver
`Station (BTS) 320. Ex. 1107, col. 4, ll. 41–45; col. 5, ll. 50–56, 62–67.
`When RA 380 sends a positioning request for a particular MS 300 to MPC,
`370, the RA can include quality of service information. Id. at col. 4, ll. 41–
`49. In order to meet the RA’s quality of service demands, MPC 370 must
`choose the optimum positioning method available. Id. at col. 4, ll. 49–51;
`see id. at col. 2, ll. 25–32. Positioning methods can be network-based, e.g.,
`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. Id. at col. 4, ll. 51–56; see id. at col. 2, l. 32–col. 3, l. 25. In
`order for MPC 370 to have knowledge of the terminal-based positioning
`methods, this information must be sent to the MPC 370 prior to receiving a
`positioning request. Id. at col. 4, ll. 56–59; see id. at col. 3, ll. 57–63; col. 5,
`ll. 22–26. When MS 300 registers with MSC/VLR 370, the positioning
`capabilities of MS 300 can be sent to MSC/VLR 370. Id. at col. 4, ll. 60–63;
`see id. at col. 5, ll. 23–26. In GSM systems, the MS 300 positioning method
`capabilities can be passed to MSC/VLR 370 with existing GSM message
`CLASSMARK UPDATE 310. Id. at col. 4, ll. 63–66; see id. at col. 3, ll.
`63–67. MPC could be co-located with the MSC/VLR so that the
`information would not need to be sent to a separate node, and RA could be
`located within the MSC/VLR. Id. at col. 2, ll. 29–31; col. 5, ll. 26–29.
`3. Claims 1–3, 11–14, 16, and 19
`Petitioner’s arguments, supported by the claim charts and other
`
`evidence, explain sufficiently how the combination of Fitch and Roel-Ng
`teaches the subject matter recited in claim 1. See Pet. 22–27, 40–47.
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`Specifically, Petitioner contends that Fitch teaches “a system for location
`tracking of mobile platforms, each mobile platform having a tracking unit”
`as recited in claim 1, based on Fitch’s wireless location-based applications
`that access information based on inputs from Location Finding Equipment
`(LFEs), and tracking wireless stations 102 (i.e., mobile platforms) each
`having a tracking unit (i.e., GPS receiver or RF signal generation). Pet. 22
`(citing Ex. 1105, col. 2, ll. 21–29; col. 12, ll. 6–8; col. 6, ll. 66–67).
`Petitioner asserts that “a location determination system communicating
`through a user interface with at least one subscriber,” is taught by Fitch
`based on location finding system (LFS) or location manager (LM) 116, 214
`comprising a number of elements working together to determine the location
`of wireless stations and communicating with a subscriber (i.e., wireless
`location application (WLA) through an interface). Id. at 22–23 (citing Ex.
`1105, col. 6, ll. 26–28; col. 7, ll. 31–33, 42–44, 56–57; col. 8, ll. 23–24; col.
`10, l. 58–col. 11, l. 3; Fig. 2). Petitioner further contends “said
`communication including inputs that include the subscriber identity and the
`identity of the mobile platform to be located” is taught by Fitch based on
`WLA sending a message requesting a location that includes parameter fields
`for wireless station identification, and WLA identification. Id. at 23 (citing
`Ex. 1105, col. 6, ll. 26–38; col. 11, ll. 35–39; Fig. 6). Petitioner further
`asserts that Fitch teaches “a communication system communicating with
`said location determination system for receiving said mobile platform
`identity” based on LFCs 208, 210, 212 that act as a communication system
`between LFS or LM 214 and the LFEs, including the receipt of mobile
`platform identification information. Id. at 23–24 (citing Ex. 1105, col. 11, ll.
`58–65; Figs. 2, 7); see Ex. 1105, col. 11, l. 58–col. 12, l. 20.
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`Petitioner further contends that “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” is taught by
`Fitch’s LFE systems that are based on different technologies, such as angle
`of arrival (AOA), time difference of arrival (TDOA), global positioning
`system (GPS), and cell/sector technologies which communicate with LFCs
`or MSC. Id. at 24 (citing Ex. 1105, col. 5, ll. 19–22, 66–67; col. 6, ll. 34–36;
`col. 12, ll. 6–8; Figs. 2, 7); see Ex. 1105, col. 1, ll. 44–51; col. 6, ll. 34–39.
`Petitioner further asserts that “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” is taught by Fitch’s LFCs that act as a
`communications system between the LFS or LM and LFEs, and which
`receive and forward mobile platform identification information to the LFEs,
`and send location information received from the LFEs to the LFS or LM. Id.
`at 26–27 (citing Ex. 1105, col. 8, ll. 23–27; col. 11, ll. 16–17; col. 11, l. 58–
`col. 12, l. 3; Fig. 7). Petitioner also contends Fitch teaches the “location
`determination system being arranged to receive said mobile platform
`location information and to forward it to said subscriber” based on Fitch’s
`LFS or LM passing the location information to the WLAs. Id. at 27 (citing
`Ex. 1105, col. 4, ll. 9–20; col. 6, ll. 26–28; col. 12, ll. 19–20; Figs. 1, 2, 7).
`
`Petitioner relies on the combination of Fitch and Roel-Ng for teaching
`“said location determination system is arranged to determine an appropriate
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`one of the plurality of remote tracking systems,” recited in claim 1.
`Specifically, Petitioner asserts Fitch teaches LFS or LM 214 receives inputs
`from multiple LFEs 202, 204, 206 that may be based on different
`technologies, and may provide different types of location information in
`different formats, with different accuracies based on different signals. Pet.
`24 (citing Ex. 1105, col. 6, ll. 30–39). Petitioner further asserts that Fitch
`teaches a wireless location interface (WLI) that allows WLAs 226, 228, 230
`to selectively prompt one or more LFEs 202, 204, and/or 206 to initiate a
`location determination. Id. at 24–25 (citing Ex. 1105, col. 10, ll. 59–63; col.
`10, l. 66–col. 11, l. 3); see id. at 41–42. Petitioner contends “said location
`determination system is arranged to determine an appropriate one of the
`plurality of remote tracking systems” is taught by Roel-Ng’s Mobile
`Positioning Center (MPC) 370, 270, which is provided with information
`concerning which positioning methods (e.g., network-based or terminal-
`based method) that each Mobile Station (MS) 300 is capable of performing,
`and uses this information and other criteria (e.g., requested quality of
`service) to determine an appropriate method to use to determine the MS
`position. Id. at 25–26 (citing Ex. 1105, col. 4, ll. 41–59; col. 5, ll. 30–44;
`Figs. 3, 4; Ex. 1116 ¶¶ 34–47); see id. at 42–43.
`
`Petitioner articulates with rational underpinning why one with
`ordinary skill in the art at the time of the invention would have combined the
`teachings of Fitch and Roel-Ng. Pet. 40–47. Petitioner contends that, based
`on Roel-Ng’s teaching that MPC 370, 270, selects the optimum positioning
`method for the mobile station to be located and takes into consideration
`quality of service, etc., it would have been obvious to move Fitch’s
`prompting of the LFEs from the WLAs to the LFS or LM because it contains
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`the LC and all of the information concerning the LFEs. Id. at 41–42 (citing
`Ex. 1107, col. 2, ll. 23–32); see id. at 43–44 (citing Ex. 1107, Figs. 1–2).
`Petitioner asserts that the analog to Roel-Ng’s MPC 370, 270 is Fitch’s LFS
`or LM 116, 214. Pet. 43 (citing Ex. 1116 ¶ 32). Additionally, we note that
`Roel-Ng teaches the Requesting Application (RA) could be located within
`the MSC/VLR, and that MPC could be co-located with MSC/VLR. Ex.
`1107, col. 2, ll. 29–31, col. 5, ll. 26–29.
`
`In support of this rational underpinning, Petitioner argues that similar
`to Roel-Ng’s MPC 370, 270, Fitch’s LFS or LM receives location
`information from various tracking systems, processes this information to
`provide location information, and serves the information to client/location
`applications. Pet. 43 (citing Ex. 1105, col. 6, ll. 16–23, 32–35; Ex. 1107,
`col. 2, ll. 25–30). Petitioner further asserts that based on the similarities
`between Fitch, and Roel-Ng, the proposed combination involves simply
`substituting Roel-Ng’s teaching of the LFS/LM selecting and prompting the
`LFE for location information, rather than the WLAs, and involves no
`inventive skill with nothing more than the predictable result of determining
`the optimum remote tracking system. Id. at 47; see Ex. 1116 ¶ 47.
`
`Petitioner also asserts that “[o]ne of ordinary skill in the art would
`have been motivated to make this combination based at least upon the
`express teachings and suggestions of the prior art.” Pet. 44. Petitioner
`directs our attention to Roel-Ng’s teaching the desirability of providing
`improved flexibility with a system that enables location requesting clients
`(i.e., RAs) to determine the mobile station location without regard to the
`particular type of different tracking systems that may be available. Id. at 44–
`45 (quoting Ex. 1107, col. 3, ll. 29–41); see Ex. 1116 ¶ 44. In support of its
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`assertion, Petitioner argues that Roel-Ng teaches that MPC 370, 270, and
`therefore Fitch’s LFS/LM, is the preferred node of the system to implement
`this flexibility. Id. at 45 (quoting Ex. 1107, col. 3, ll. 57–63); see Ex. 1116 ¶
`45.
`Petitioner also contends that the Roel-Ng’s MPC is configured so that
`
`it can receive information about the positioning methods used by the mobile
`station, and receive location information requests from the subscribers (i.e.,
`requesting applications). Pet. 45–46 (quoting Ex. 1107, col. 4, ll. 41–51);
`see Ex. 1116 ¶ 45. Petitione
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