Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: February 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01696
`Patent 7,525,484 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, RICHARD E. RICE, BARBARA A. PARVIS,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: February 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01696
`Patent 7,525,484 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, RICHARD E. RICE, BARBARA A. PARVIS,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2015-01696
`Patent 7,525,484 B2
`
`I. INTRODUCTION
`A. Background
`Apple Inc. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`to institute an inter partes review of claims 25–28, 31, 36–43, 45, 47–51,
`55–57, 60–61, 63, and 72 of U.S. Patent No. 7,525,484 B2 (Ex. 1001, “the
`’484 patent”). TracBeam, LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”).
`Upon consideration of the Petition and Preliminary Response, we
`conclude, under 35 U.S.C. § 314(a), that Petitioner has not established a
`reasonable likelihood that it would prevail with respect to at least one
`challenged claim of the ’484 patent. Accordingly, under the standard of
`§ 314, we deny the Petition and decline to institute an inter partes review of
`the challenged claims of the ’484 patent.
`
`
`B. Related Matters
`The ’484 patent is the subject of several lawsuits filed in the United
`States District Court for the Eastern District of Texas. Pet. 1; Paper 5, 1–2.
`The ’484 patent also is the subject of Apple Inc. v. TracBeam, LLC,
`Case IPR2015-01697 (PTAB), T-Mobile US, Inc.. v. TracBeam, LLC, Case
`IPR2015-01708 (PTAB), and T-Mobile US, Inc. v. TracBeam, LLC, Case
`IPR2015-01711 (PTAB). Pet. 1; Paper 5, 3.
`Various related patents also are subjects of these and other
`proceedings before the district courts and the Board. Paper 5, 1–3.
`
`
`2
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`IPR2015-01696
`Patent 7,525,484 B2
`
`C. The ’484 Patent
`The ’484 patent describes location systems for wireless
`telecommunication infrastructures. Ex. 1001, Abstract. According to the
`’484 patent, the location techniques are useful for 911 emergency calls,
`vehicle tracking and routing, and location of people and animals. Id. at
`Abstract, 12:11–17.
`Figure 4, reproduced below, illustrates an embodiment:
`
`
`Figure 4 is an overall view of a wireless radio location network architecture.
`Id. at 21:66–67. The network includes a plurality of mobile stations (“MS”)
`140, a mobile switching center (“MSC”) 112, and a plurality of wireless cell
`sites forming radio coverage area 120, each site including a fixed-location
`base station 122 for voice and data communication with MSs 140. Id. at
`24:41–57. The network also includes location base stations (“LBS”) 152
`
`3
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`IPR2015-01696
`Patent 7,525,484 B2
`with wireless location enablement, e.g., with transponders used primarily in
`communicating MS location related information to location center 142 (via
`base stations 122 and MSC 112). Id. at 24:57–64. LBSs can be placed, for
`example, in dense urban areas, in remote areas, along highways, or wherever
`more location precision is required than can be obtained using conventional
`wireless infrastructure components. Id. at 28:29–38.
`Location center 142 determines a location of a target MS 140. Id. at
`25:8–10, 37:43–46. The system uses a plurality of techniques for locating
`MSs, including two-way time of arrival (“TOA”), time difference of arrival
`(“TDOA”), and Global Positioning System (“GPS”). Id. at Abstract, 9:5–23,
`11:7–55, 66:45–50. To determine a location for a MS, the system computes
`a first order model (also referred to as a hypothesis or estimate) for one or
`more of the locating techniques, computes a confidence value for each
`model indicating the likelihood that the model is correct, performs additional
`computations on the models to enhance the estimates, and computes from
`the models a “most likely” location for the MS. Id. at 12:62–13:20, 38:9–31.
`The most likely location can be a composite of the estimates. Id. at 13:22–
`30, 66:45–50.
`Location estimates can be provided to location requesting
`applications, such as 911 emergency, police and fire departments, taxi
`services, etc. Id. at 8:52–60, 13:20–22, 38:32–34.
`
`
`4
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`IPR2015-01696
`Patent 7,525,484 B2
`
`D. Illustrative Claim
`Of the challenged claims, claims 25, 27, 45, 49, 51, 57, and 63 are
`independent. Claim 25, reproduced below, is illustrative of the claimed
`subject matter:
`25. A method for estimating, for each mobile station M of a
`plurality of mobile stations, an unknown terrestrial
`location (LM) for M using wireless signal measurements
`obtained via transmissions between said mobile station M
`and a plurality of fixed location terrestrial communication
`stations, wherein each of said communications stations is
`substantially co-located with one or more of a transmitter
`and a receiver for wirelessly communicating with said
`mobile station M, comprising:
` initiating a plurality of requests for information related to the
`location of said mobile station M, the requests provided to
`each of at least two mobile station location evaluators,
`wherein there is at least a first of the requests provided to
`a first of the location evaluators and a second of the
`requests, different from the first request, provided to a
`second of the location evaluators, such that when said
`location evaluators are supplied with corresponding input
`data having values obtained using wireless signal
`measurements
`obtained
`via
`two way wireless
`communication between said mobile station M, and the
`communication stations, each of said first and second
`location evaluators determine corresponding location
`information related to LM, and
`wherein for at least one location L of one of the mobile stations,
`said first location evaluator and said second location
`evaluator output, respectively, first and second position
`information related to the one mobile station being at L
`wherein neither of
`the first and second position
`information is dependent upon the other;
`obtaining a first collection of location information of said mobile
`station M, wherein the first collection includes first
`location information from the first location evaluator, and
`
`5
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`IPR2015-01696
`Patent 7,525,484 B2
`second location information from the second location
`evaluator;
`determining resulting information related to the location LM of
`the mobile station M, wherein the resulting information is
`dependent on geographical information in each of the first
`and second location information; and
`via
`transmitting,
`to
`a
`predetermined destination
`communications network, the resulting information.
`Ex. 1001, 174:11–63.
`
`
`a
`
`E. References Relied Upon
`Petitioner relies upon the following prior art references:
`Dupray (“PCT ‘307)” WO 98/10307
`Mar. 12, 1998
`Federal Communications Commission, Third Report and Order,
`14 FCC Rcd. 17012 (1999) (“FCC 99-245”)
`Stilp
`US 5,327,144
`
`July 5, 1994
`
`Ex. 1003
`Ex. 1012
`
`Ex. 1032
`
`Petitioner also relies upon a Declaration of Kevin S. Judge. Ex. 1002
`(“Judge Decl.”).
`
`F. Asserted Grounds of Unpatentability
`Petitioner argues that the challenged claims are unpatentable based on
`the following grounds (Pet. 41):
`Reference(s)
`PCT ’307 and FCC 99-245
`
`Basis Claim(s) challenged
`§ 103
`25–28, 31, 36–42, 45, 47–51,
`55–57, 60, 61, 63, and 72
`43
`
`PCT ’307, FCC 99-245, and Stilp § 103
`
`
`
`II. ANALYSIS
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`
`6
`
`
`
`IPR2015-01696
`Patent 7,525,484 B2
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015), cert. granted, Cuozzo Speed Techs.
`LLC v. Lee, 84 U.S.L.W. 3218 (U.S. 2016). In applying a broadest
`reasonable construction, claim terms generally are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`For the purposes of this Decision, we are not persuaded that any of the
`terms identified by Petitioner requires express construction, because even if
`we were to adopt Petitioner’s proffered positions on claim construction,
`Petitioner has not met its burden to show that it is reasonably likely to
`succeed in showing that the challenged claims are unpatentable. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
`
`
`B. Prior Art Status of PCT ’307
`Petitioner argues that (1) claims 25–28, 31, 36–42, 45, 47–51, 55–57,
`60, 61, 63, and 72 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over the combination of PCT ’307 and FCC 99-245; and (2) claim 43 is
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`PCT ’307, FCC 99-245, and Stilp. Pet. 41–59. Both grounds are predicated
`upon Petitioner’s assertion that the challenged claims are not entitled to
`priority, under 35 U.S.C. § 120, of the parent U.S. Patent Application No.
`09/194,367 (“’367 application”), which is the National Stage application
`corresponding to International Application No. PCT/US97/15892 (“PCT
`
`7
`
`
`
`IPR2015-01696
`Patent 7,525,484 B2
`’892”), filed on September 8, 1997, because that applications “lack[s]
`written description support” for the challenged claims. Pet. 2–3, 32–40. As
`a result, according to Petitioner, the publication of PCT ’892—PCT ’307—is
`prior art. Id.
`Petitioner contends specifically that PCT ’892—published as PCT
`’307—“does not contain any disclosure whatsoever of a GPS handset.” Id.
`at 34. Patent Owner points out correctly that the challenged claims do not
`recite expressly “GPS handset.” Prelim. Resp. 8.
`Even assuming that the claims encompass a GPS handset as Petitioner
`asserts, we are not persuaded, based on the arguments and evidence
`presented, that PCT ’307 fails to disclose a GPS handset. PCT ’307
`provides more than 200 pages of textual description and more than 50 pages
`of drawings. See generally Ex. 1003. PCT ’307 includes, amongst that
`disclosure, a non-exclusive list of wireless technologies that the mobile
`stations may use to communicate with any of “infrastructure base stations
`122,” “mobile base stations(s) 148,” and “LBS [location base stations] 152.”
`Id. at 26.1 Furthermore, as Patent Owner points out (Prelim. Resp. 13–14),
`PCT ’307 discloses that the “mobile location unit” in a mobile base station
`may be similar to that in a mobile unit: “For example . . . the electronics of
`the mobile location unit may be little more than an onboard MS 140.” Ex.
`1003, 102. This is consistent with the definitions section, which indicates
`that the term “mobile station” (“MS”) is synonymous with “location unit.”
`Id. at 11 (explaining in definition 3.2 that “in some contexts herein instead or
`in addition to MS, the following terms are also used . . . ‘location unit’ (LU).
`
`
`1 Citations are to the page numbers of the PCT ‘307, not to the page
`numbering provided in the footer.
`
`8
`
`
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`IPR2015-01696
`Patent 7,525,484 B2
`In general these terms may be considered synonymous.”). PCT ’307 further
`discloses that a GPS receiver may be incorporated into that “mobile location
`unit”—which may be “little more than an onboard MS 140.” Id. (“In an
`enhanced version of the mobile location unit, a GPS receiver may also be
`incorporated so that the location of the mobile location unit may be
`determined.”). Therefore, in light of these disclosures and the arguments
`before us, we determine that even if the claims require a GPS handset as
`Petitioner asserts, the evidence considered in its entirety supports the
`conclusion that the inventor had possession of the invention as of the filing
`date of PCT ’892 and, therefore, it’s publication—PCT ’307—is not prior
`art.
`
`Petitioner relies on the Declaration of Mr. Judge (see, e.g., Pet. 35–36
`(citing Ex. 1002 ¶¶ 28–38)), who testifies that “one of ordinary skill in the
`art would have understood the disclosure of GPS in the ’892 application as
`applying to use of GPS only in base stations, not GPS in mobile stations or
`handsets.” Ex. 1002 ¶ 37. Mr. Judge acknowledges that PCT ’307 describes
`(1) “use of a GPS receiver in a mobile base station;” and (2) use of “the
`included GPS” to determine “the mobile station’s location.” Id. ¶ 35.
`Mr. Judge testifies, however, that “if the inventors had contemplated and
`were in possession of GPS in a mobile station or handset, one of skill in the
`art would have expected them to have similarly included such disclosure in
`the application as was included for GPS in the mobile base station.”
`Id. ¶ 37.
`We are not persuaded by Mr. Judge’s testimony, which is conclusory
`and does not disclose sufficiently the underlying facts or data on which his
`opinion is based. See 37 C.F.R. § 42.65(a). As a result, we give little weight
`to Mr. Judge’s testimony regarding, for example, the expectation of one of
`
`9
`
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`IPR2015-01696
`Patent 7,525,484 B2
`ordinary skill in the art in light of the disclosure of PCT ’307 considered in
`its entirety. As Patent Owner points out, Mr. Judge and the Petition also do
`not consider sufficiently the “definitions” section of PCT ’307, which we are
`persuaded is highly relevant to understanding what PCT ’307 discloses.
`Prelim. Resp. 15.
`Petitioner bears the overall burden of persuasion to prove
`unpatentability, but the burden of production may, in certain circumstances,
`shift to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378–80 (Fed. Cir. 2015). It is unnecessary, however,
`to determine whether the burden of production shifted on the issue of written
`description support for the challenged claims because, even if Patent Owner
`bore the burden, we determine that it identified sufficient written description
`support in PCT ’307, as discussed above. The proper inquiry is whether
`PCT ’307 “reasonably conveys to those skilled in the art that the inventor
`had possession of the claimed subject matter as of the filing date.” Ariad
`Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
`banc). Furthermore, “[t]he disclosure as originally filed does not . . . have to
`provide in haec verba support for the claimed subject matter at issue,” nor
`must it describe “every conceivable and possible future embodiment of [the]
`invention.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364–65
`(Fed. Cir. 2003) (internal quotation marks omitted).
`Based on the evidence in the Petition, including Mr. Judge’s
`testimony and the respective portions of PCT ’307 cited by Petitioner and
`Patent Owner, we determine that the record here indicates there is sufficient
`written description support for the challenged claims. Petitioner, therefore,
`has not persuaded us that PCT ’307 is prior art to the challenged claims.
`
`10
`
`
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`IPR2015-01696
`Patent 7,525,484 B2
`Accordingly, we determine that Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing that the challenged claims are
`unpatentable on the grounds that they would have been obvious over PCT
`’307 in combination with either FCC 99-245 alone or with FCC 99-245 and
`Stilp.
`
`III. CONCLUSION
`We do not institute an inter partes review of any challenged claim.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`
`
`11
`
`
`
`IPR2015-01696
`Patent 7,525,484 B2
`PETITIONER:
`David L. Fehrman
`Martin M. Noonen
`MORRISON & FOERSTER LLP
`10684-TracBeam-IPR@mofo.com
`
`PATENT OWNER:
`Sean A. Luner
`DOVEL & LUNER, LLP
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
`
`12
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