UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`
`Patent No. 7,525,484
`
`
`Inter Partes Review No. _____________
`
`
`PETITION FOR INTER PARTES REVIEW
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`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`
`Patent No. 7,525,484
`
`
`Inter Partes Review No. _____________
`
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
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`la-1294873
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`Inter Partes Review of USP 7,525,484
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`Docket No. 106840000508
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`TABLE OF CONTENTS
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`I. NOTICES AND STATEMENTS ...................................................................... 1
`
`II.
`
`INTRODUCTION ............................................................................................. 2
`
`III. DEVELOPMENT OF POSITION LOCATION TECHNOLOGY FOR
`CELLPHONES (INCLUDING ISSUANCE OF FCC 96-264) ........................ 3
`
`IV. THE ’484 PATENT ........................................................................................... 8
`
`A. Summary of the ’484 Patent ...................................................................... 8
`
`1. Location Determination by Use of Measurements of Signals
`Transmitted Between Mobile Stations and Base Stations .............. 10
`
`2. Use of GPS in the ’484 Patent ........................................................ 12
`
`B. Prosecution History of the ’484 Patent and FCC Rule Changes ............. 16
`
`1.
`
`Prosecution of the Parent (’367/PCT ’892) Application................. 16
`
`a.
`
`b.
`
`1997 Memorandum Opinion and Order (FCC 97-402) .......... 17
`
`1998 PCT Amendment and National Stage Filing ................. 18
`
`c. March 1999 Preliminary Amendment .................................... 19
`
`d.
`
`e.
`
`f.
`
`1999 Third Report and Order (FCC 99-245) .......................... 20
`
`February 2000 Preliminary Amendment ................................ 22
`
`Ex Parte Quayle Action, RCE, Continued Prosecution ......... 22
`
`2.
`
`Prosecution of Continuation (Which Issued as ’484 Patent) .......... 23
`
`a.
`
`b.
`
`2001 Continuation Filing with New Claims ........................... 23
`
`2002 “Preliminary Amendment” Adding New Matter ........... 23
`
`c. Requests for Continued Examination and Issuance ............... 26
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`V. CLAIM CONSTRUCTION............................................................................. 27
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`VI. PRIORITY DATE OF THE ’484 PATENT ................................................... 32
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`VII. IDENTIFICATION OF CHALLENGE .......................................................... 40
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`A. Statutory Grounds for the Challenge of Each Claim .............................. 41
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`B. Ground 1 – Obviousness of All Challenged Claims (Except Claim 43)
`Based on PCT ’307 in View of FCC 99-245 .......................................... 41
`
`C. Ground 2 – Obviousness of Challenged Claim 43 Based on PCT ’307 in
`View of FCC 99-245 in Further View of Stilp ........................................ 59
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`VIII. CONCLUSION ................................................................................................ 59
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`Docket No. 106840000508
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`Exhibit List for Inter Partes Review of U.S. Patent No. 7,525,484
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`Exhibit Description
`
`U.S. Patent No. 7,525,484 to Dupray et al. [referenced as “the ’484
`patent”]
`
`Declaration of Kevin S. Judge [referenced as “Judge Decl.”]
`(includes Mr. Judge’s CV as Appendix A thereto)
`
`PCT Application No. PCT/US97/15892 [i.e., parent application
`referenced as “PCT ’892”], which was published on March 12, 1998
`as PCT Publication No. WO 98/10307 [referenced as “PCT ’307”]
`*Note: a copy of PCT ’307 appears in the file history of U.S.
`Patent No. 7,764,231 (i.e., the parent of the ’484 patent), but has
`numerous markings thereon; accordingly, Petitioner is submitting
`a “clean” copy of PCT ’307 as this exhibit
`
`June 12, 1996 “Report and Order and Further Notice of Proposed
`Rulemaking,” released on July 26, 1996 in CC Docket No. 94-102,
`and published in FCC Record, Vol. 11, No. 33, Pages 18599 to
`19183, Supplement at pp. 18676-773; see also 11 FCC Rcd 18676
`and 1996 FCC LEXIS 3966 [referenced as “FCC 96-264” or “1996
`Report and Order”]
`
`Rappaport et al., “Position Location Using Wireless Communications
`on Highways of the Future,” IEEE Communications Magazine, pp.
`33-41 (Oct. 1996) [referenced as “Rappaport”]
`
`Krizman et al., “Wireless Position Location: Fundamentals,
`Implementation Strategies, and Sources of Error,” IEEE Vehicular
`Technology Conf., Phoenix, AZ (May 5-7, 1997) [referenced as
`“Krizman”]
`
`Zagami et al., “Providing Universal Location Services Using a
`Wireless E911 Location Network,” IEEE Communications Magazine,
`pp. 66-71 (Apr. 1998) [referenced as “Zagami”]
`
`PCT Application No. PCT/US/15933, published on March 12, 1998
`as PCT Publication No. WO 98/10538 [referenced as “PCT ’538”]
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`Exhibit #
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`1001
`
`1002
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`1003
`(prior art
`reference)
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`1004
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`1005
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`1006
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`1007
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`1008
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`December 1, 1997 “Memorandum Opinion and Order,” released on
`December 23, 1997 in CC Docket No. 94-102, and published in FCC
`Record, Vol. 12, No. 36, Pages 22497 to 23188, Supplement at pp.
`22665-755; see also 12 FCC Rcd 22665 and 1997 FCC LEXIS 7402
`[referenced as “FCC 97-402”]
`
`PCT Amendment and accompanying papers (including Verified
`Statement Claiming Small Entity Status) submitted with the National
`Stage filing of Application No. 09/194,367 [which is referenced as
`“the ’367 application”] on November 24, 1998 in the parent
`application
`
`March 8, 1999 Preliminary Amendment in prosecution of the parent
`application
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`Docket No. 106840000508
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`1009
`
`1010
`
`1011
`
`September 15, 1999 “Third Report and Order,” released on October
`6, 1999 in CC Docket No. 94-102, and published in FCC Record, Vol.
`14, No. 31, Pages 17012 to 17627 (Oct. 4, 1999 – Oct. 15, 1999) at
`pp. 17388-466; see also 14 FCC Rcd 17388 and 1999 FCC LEXIS
`4896 [referenced as “FCC 99-245”]
`
`1012
`(prior art
`reference)
`
`February 7, 2000 Second Preliminary Amendment in prosecution of
`the parent application
`
`1013
`
`March 21, 2000 office action in prosecution of the parent application
`
`1014
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`August 17, 2000 Request for Continued Examination and amendment
`in prosecution of the parent application
`
`October 31, 2000 Supplemental Amendment in prosecution of the
`parent application
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`December 8, 2000 office action in prosecution of the parent
`application
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`April 16, 2001 Response in prosecution of the parent application
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`July 17, 2001 Notice of Allowance in prosecution of the parent
`application
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`1015
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`1016
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`1017
`
`1018
`
`1019
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`Inter Partes Review of USP 7,525,484
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`Collection of additional Requests for Continued Examination (filed
`September 18, 2001, February 26, 2002, October 2, 2002, February
`6, 2003, June 6, 2003, April 12, 2004, March 21, 2005, January 24,
`2006, February 21, 2008, and October 8, 2008) in prosecution of the
`parent application
`
`January 26, 2001 Continuation Application No. 09/770,838 (which
`issued as the ’484 patent) [referenced as “the ’838 application”]
`*Note: the copy of the ’838 application available on PAIR does
`not contain any drawings that may have been filed on January 26,
`2001; this exhibit therefore includes the drawings that were
`attached to the Applicants’ April 30, 2001 Response to Notice to
`File Missing Application Papers (which is itself provided as it
`appears on PAIR)
`
`January 26, 2001 Preliminary Amendment in prosecution of the ’484
`patent
`
`September 21, 2001 office action in prosecution of the ’484 patent
`
`February 20, 2002 “Preliminary Amendment” in prosecution of the
`’484 patent
`*Note: this is a partial copy (missing pages 91-133) that is
`attached to a March 22, 2006 “Response to Office Action Dated
`February 8, 2006” (and this exhibit contains these documents as
`they appear in the publicly available file history for the ’484
`patent on PAIR, which is incomplete in many regards)
`
`Collection of Ex Parte Quayle actions (dated August 14, 2002 and
`June 13, 2008) and Notices of Allowance (dated March 11, 2003,
`August 27, 2003, April 20, 2004, June 15, 2006, and May 23, 2007)
`issued during prosecution of the ’484 patent
`
`December 15, 2008 Notice of Allowance in prosecution of the ’484
`patent
`
`November 2, 2012 “Plaintiff’s Markman tutorial” in TracBeam, LLC
`v. AT&T, Inc. et al., Case No. 6:11-cv-96 (E.D. Tex.) (“AT&T case”)
`
`November 25, 2013 Memorandum Opinion and Order in AT&T case
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`January 13, 2011 After Allowance Amendment in prosecution of
`Application No. 12/014,092 (which issued as related U.S. Patent No.
`8,032,153)
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`Docket No. 106840000508
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`1029
`
`1030
`
`1031
`
`1032
`(prior art
`reference)
`
`Application No. 09/176,587, filed October 21, 1998 [referenced as
`“the ’587 application”]and later issued as U.S. Patent No. 7,274,332
`
`Provisional Application No. 60/062,931, filed October 21, 1997
`[referenced as “the ’931 provisional”]
`
`U.S. Patent No. 5,327,144 to Stilp et al., issued July 5, 1994
`[referenced as “Stilp”]
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`Docket No. 106840000508
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`Petitioner Apple Inc. (“Petitioner”) respectfully petitions for 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 (“the ’484 patent” (Ex. 1001)) in accordance with 35 U.S.C.
`
`§§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`I.
`
`NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Apple Inc. is the real party-in-interest.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following related
`
`matters in which the ’484 patent is asserted: TracBeam, LLC v. Apple Inc., Case
`
`No. 6:14-cv-680 (E.D. Tex.) (“the Apple case”) and TracBeam, LLC v. T-Mobile
`
`US, Inc., et al., Case No. 6:14-cv-678 (E.D. Tex.), both pending. The ’484 patent
`
`was previously asserted in TracBeam, LLC v. AT&T, Inc. et al., Case No. 6:11-cv-
`
`96 (E.D. Tex.) (“the AT&T case”) and TracBeam, LLC v. Google, Inc., Case No.
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`6:13-cv-93 (E.D. Tex.), both dismissed. Petitioner is concurrently filing an
`
`additional petition for inter partes review of the ’484 patent on separate grounds,
`
`as well as petitions on the other patents asserted in the Apple case—U.S. Patent
`
`Nos. 7,764,231 (“the ’231 patent”), 7,298,327 (“the ’327 patent”), and 8,032,153
`
`(“the ’153 patent”). On August 11, 2015, T-Mobile US, Inc., T-Mobile USA, Inc.,
`
`TeleCommunication Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM
`
`Ericsson filed three petitions for inter partes review of the ’484 patent that have
`
`been assigned case numbers IPR2015-01708, -01709, and -01711.
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`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
`
`counsel (and a power of attorney accompanies this Petition):
`
`Lead Counsel
`David L. Fehrman
`dfehrman@mofo.com
`Registration No.: 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Tel: (213) 892-5601
`Fax: (213) 892-5454
`
`Backup Counsel
`Martin M. Noonen
`mnoonen@mofo.com
`Registration No.: 44,264
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Tel: (213) 892-5764
`Fax: (213) 892-5454
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above. Petitioner consents to electronic service by email to
`
`10684-TracBeam-IPR@mofo.com.
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’484 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
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`requesting an inter partes review challenging the patent claims on the grounds
`
`identified in this Petition. Petitioner is the only defendant in the above-referenced
`
`Apple case, and was first served with a Complaint alleging infringement of the
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`’484 patent on August 12, 2014.
`
`II.
`
`INTRODUCTION
`
`The ’484 patent is directed to location determination for cellular phones. It
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`issued on April 28, 2009 from Appl. No. 09/770,838 (“’838 application”), filed on
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`January 26, 2001. The ’484 patent is a continuation of Appl. No. 09/194,367
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`(“’367 application”), filed on November 24, 1998 as the National Stage of Int’l
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`Appl. No. PCT/US97/15892 (“PCT ’892”), filed on September 8, 1997.
`
`As explained herein, the challenged claims are not entitled to priority of the
`
`parent (’367 application/PCT ’892) under 35 U.S.C. § 120, and are unpatentable
`
`over the earlier publication of PCT ’892 (published as WO 98/10307 (“PCT ’307”;
`
`Ex. 1003) on March 24, 1998) in combination with other art (Exs. 1012 and 1032).
`
`Section III of this Petition discusses the background and development of
`
`position location technology for cellular telephones, particularly in the context of
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`requirements adopted by the FCC in the 1990s. Section IV summarizes the
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`’484 patent and its prosecution history, while Section V discusses claim
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`construction. Section VI addresses the priority date issue, and Section VII sets
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`forth the detailed grounds for unpatentability. This showing is accompanied by the
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`Declaration of Kevin S. Judge (“Judge Decl.”; Ex. 1002). Accordingly, Petitioner
`
`respectfully requests a Decision to institute inter partes review.
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`III. DEVELOPMENT OF POSITION LOCATION TECHNOLOGY FOR
`CELLPHONES (INCLUDING ISSUANCE OF FCC 96-264)
`
`The development of position location technology has been driven in large
`
`part by
`
`requirements
`
`imposed upon cellular carriers by
`
`the Federal
`
`Communications Commission (“FCC”) directed to providing location information
`
`of cellular telephones for the purpose of supporting enhanced 911 (“E911”)
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`services to be used by Public Service Answering Points (“PSAPs”) in responding
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`to emergency calls for assistance. In particular, on June 12, 1996, the FCC
`
`adopted a “Report and Order” in CC Docket No. 94-102 (“In the Matter of
`
`Revision of the Commission’s Rules To Ensure Compatibility with Enhanced 911
`
`Emergency Calling Systems”) directed to such services (“FCC 96-264”; Ex. 1004).
`
`In FCC 96-264 (which was released on July 26, 1996), the FCC took “several
`
`important steps to foster improvements in the quality and reliability of 911 services
`
`available to the customers of wireless telecommunications providers.” (Id. at ¶ 1.)
`
`The FCC adopted phased requirements for location services in FCC 96-264.
`
`Phase I required carriers to be able to “identify a caller’s Automatic Number
`
`Identification (ANI) and the location of the base station or cell site receiving a 911
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`call to the designated PSAP.” (Id. at ¶ 10.) Phase II required “the capability to
`
`identify the latitude and longitude of a mobile unit making a 911 call, within a
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`radius of no more than 125 meters in 67 percent of all cases.” (Id.)
`
`At the time of the 1996 Report and Order, a number of different position
`
`location technologies already existed. An overview is provided in Rappaport et al.,
`
`“Position Location Using Wireless Communications on Highways of the Future,”
`
`IEEE Communications Magazine, pp. 33-41 (Oct. 1996) (Ex. 1005). The
`
`technologies described in Rappaport include (1) Global Positioning System
`
`(“GPS”) using time-of-arrival measurement of signals received from plural
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`satellites, (2) Signpost Navigation using beacon transmitters, and (3) cellular
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`geolocation, which uses the existing cellular infrastructure and provides position
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`estimates of mobile units as they transmit over standard frequencies. (Id. at 34.)
`
`According to the Rappaport article, “[g]eolocation offers some advantages to
`
`GPS since it concentrates cost at each base station and allows position location to
`
`be performed without the need of GPS at the mobile. Thus, standard cellular
`
`phones, including handheld portables, may be tracked.” (Id.) Rappaport further
`
`explained that position location systems may be either “unilateral” (in which a
`
`mobile unit forms an estimate of its own position) or “multilateral” (in which an
`
`estimate of the mobile location is based on a signal transmitted by the mobile unit
`
`and received at multiple fixed base stations, and the position estimate is formed by
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`the network, rather than by the mobile unit itself). (See id. at 35.)
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`Location methods discussed included angle-of-arrival (“AOA”) and time-of-
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`arrival (“TOA”) techniques, as well as combined (or hybrid) techniques. (See id.
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`at 35-36.) Rappaport reiterated that cellular geolocation has advantages over GPS
`
`including compatibility with existing phones for E911, and noted that “[p]lacing
`
`the responsibility of position location at the base station alleviates the difficulties
`
`of integrating GPS in the handheld subscriber unit.” (Id. at 39.)
`
`Additional background regarding wireless position location technology is
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`provided
`
`in Krizman et al., “Wireless Position Location: Fundamentals,
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`Implementation Strategies, and Sources of Error,” IEEE Vehicular Technology
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`Conf., Phoenix, AZ (May 5-7, 1997) (Ex. 1006). Krizman reviewed basic position
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`location techniques then feasible for cellular wireless system providers. The
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`described methods in Krizman included beacon location techniques, direction-
`
`finding techniques, and time-difference-of-arrival (“TDOA”) techniques.
`
`The Krizman paper cited to FCC 96-264 (see id. at § 2, n.2) and observed
`
`that because there were already over 48 million handsets in use in the U.S. as of
`
`mid-1997, any widely deployed position location system would likely need to be
`
`compatible with the existing base of operational handsets:
`
`GPS-based and other techniques where synchronization and/or
`calculations must be performed by the mobile transmitter would
`require replacing most existing mobile units with modified handsets.
`Such replacement may not be feasible in the near term. We therefore
`limit discussion in this paper to those techniques which can be used
`with existing handsets.
`
`(Ex. 1006 at § II.) In fact, in its 1996 Report and Order (i.e., FCC 96-264), the
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`FCC had explicitly recognized that modification of handsets was not likely:
`
`It appears from the Consensus Agreement comments that E911 will
`generally be implemented by network-based technology, rather than
`by modification of handsets.
`
`(Ex. 1004 at ¶ 111.)
`
`Another overview of then-available position location techniques, which
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`began by referencing the 1996 FCC Report and Order (i.e., FCC 96-264) and its
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`requirement to locate E911 callers, is set forth in Zagami et al., “Providing
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`Universal Location Services Using a Wireless E911 Location Network,” IEEE
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`Communications Magazine, pp. 66-71 (Apr. 1998) (Ex. 1007). Zagami depicted a
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`typical cellular telephone system in the illustration reproduced below:
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`
`
`(Id. at 67.) As shown, a network of base stations is controlled by a network of
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`mobile switching centers which are linked via the public telephone network.
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`Zagami explained that proposed network-based location systems measure signal
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`characteristics such as time-of-arrival or angle-of-arrival of signals received at
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`several receiver stations from which location is estimated, and noted that there are
`
`no modifications to the mobile handsets. (Id. at 66.) The article further noted that
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`handset-based techniques rely on a modified handset to calculate its own position,
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`and that one such technique is to use a GPS receiver embedded in the handset.
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`(Id.) The authors cited the “obvious drawbacks of handset-based approaches [as]
`
`the cost of developing a suitable low-power and economical integrated technology
`
`for use in handsets and the cost of deploying new handsets.” (Id.)
`
`IV. THE ’484 PATENT
`A.
`Summary of the ’484 Patent
`The ’484 patent discloses a network-based location system employing
`
`cellular geolocation. As stated in the “Summary of the Invention,” an objective is
`
`to accurately locate people and/or objects in a cost-effective manner and to:
`
`provide such location capabilities using the measurements from
`wireless signals communicated between mobile stations and a network
`of base stations, wherein the same communication standard or
`protocol is utilized for location as is used by the network of base
`stations for providing wireless communications with mobile stations
`for other purposes such as voice communication[.]
`
`(’484 (Ex. 1001) at 7:66-8:9.) Related objectives are listed in the Summary at
`
`sections (1.1)-(1.6) and include, inter alia, providing a system requiring few if any
`
`modifications to a typical telephony infrastructure which can use the native
`
`electronics of commercially available telephony wireless mobile stations (e.g.,
`
`handsets) as location devices. (Id. at 8:13-33.1) As set forth in the Summary at
`
`1 The “or likely to be available” language in section (1.2), as well as the entirety of
`
`(Footnote continues on next page.)
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`sections (2.1)-(2.6), another objective is to provide a location system that uses a
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`plurality of location techniques for increasing location accuracy. (Id. at 9:1-22.)
`
`FIG. 4 of the ’484 patent (reproduced below) is an overview of a wireless
`
`location network architecture. In the below figure, mobile stations (“MS”) 140 are
`
`highlighted in yellow, and various different types of base stations (including
`
`infrastructure base stations 122, mobile base stations 148, and location base
`
`stations 152) are highlighted in pink. (See, e.g., ’484 at 24:36-25:17.)
`
`(Footnote continued from previous page.)
`sections (1.7)-(1.9) were not part of the specification as filed, but rather were
`
`added by amendment during prosecution (as detailed below).
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`This system includes “a location center 142 which is required for
`
`determining a location of a target MS 140 using signal characteristic values for this
`
`target MS” (id. at 25:8-10). The Location Center 142 interfaces with the mobile
`
`switching center (“MSC”) 112 of the wireless network via a signal processing
`
`system 1220, as shown below in FIG. 5 of the patent (where the mobile station 140
`
`and various base stations are again respectively highlighted in yellow and pink):
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`In operation, the signal processing subsystem 1220 receives measurements
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`from the MSC 112 of signals communicated between the MS 140 and base stations
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`122 (BS), 148 (MBS), and 152 (LBS). (See, e.g., id. at 28:60-29:37.)
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`1.
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`Location Determination by Use of Measurements of Signals
`Transmitted Between Mobile Stations and Base Stations
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`Consistent with the 1996 FCC Report and Order, the ’484 patent discloses a
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`network-based system which uses measurements of signals transmitted between a
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`mobile station to be located and base stations to determine position location. In the
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`’484 patent, plural location estimates are obtained from such signals using different
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`techniques. These techniques are referred to as location hypothesizing first order
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`models (“FOMs”), which are shown at box 1224 in FIG. 5. Their basic operation
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`is outlined in (4.1)-(4.4) of the Summary (’484 at 12:27-13:30). As noted at 12:55-
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`58, “the signal data measurements are ensembles of samples from the wireless
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`signals received from the target MS by the base station infrastructure[.]” Those
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`signal characteristic values are provided to one or more MS hypothesizing “first
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`order models” or “location estimating models.” (Id. at 12:64-67.)2
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`First order models for providing initial position location estimates are
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`described initially at 51:14-54:67 of the ’484 patent, and then in more detail at
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`62:54-82:17. First order models include distance model FOMs (id. at 51:40-52:21;
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`62:58-64:22), statistically-based models using a “location signature” database of
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`verified wireless signal measurements of an MS at different locations (id. at 52:22-
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`40; 65:57-66:67), adaptive learning models such as an artificial neural net (id. at
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`52:41-58; 53:35-40; 67:1-74:62), a location base station model using low-cost base
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`2 As discussed below, the “Summary Discussion” from at least 10:35-12:18 of the
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`’484 patent was not in the original application but was added during prosecution.
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`stations 152 (id. at 52:59-53:28; 65:17-56), a coverage area first order model (id. at
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`64:23-65:16), a mobile base station model generated from target MS location data
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`received from the mobile base station 148 (id. at 53:29-32), and a distributed
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`antenna model (id. at 53:41-62). With respect to the mobile base station first order
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`model, the mobile base station location subsystem is described at 100:5-112:52 and
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`in Appendix A to the patent. After obtaining location estimates using the various
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`first order models, the location estimates may be adjusted or modified, and a most
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`likely MS location estimate is determined, as shown at box 1228 in FIG. 5 (see
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`also ’484 at 13:12-30; 13:52-14:26; 55:3-57:12).
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`2.
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`Use of GPS in the ’484 Patent
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`As detailed below, the challenged claims of the ’484 patent broadly
`
`encompass the use of mobile stations that are GPS handsets. However, the ’484
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`specification does not disclose use of a GPS handset.
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`In the Background at 1:58-2:29, the use of GPS is criticized as “impractical
`
`in many applications,” and specifically with respect to its use in handsets:
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`In brief, each of the various GPS embodiments have the same
`fundamental problems of limited reception of the satellite signals and
`added expense and complexity of the electronics required for an
`inexpensive location mobile station or handset for detecting and
`receiving the GPS signals from the satellites.
`
`(’484 at 2:24-29; emphasis added.) The ’484 patent instead provided a network-
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`based position location system “using the measurements from wireless signals
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`communicated between mobile stations and a network of base stations, wherein the
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`same communication standard or protocol is utilized for location as is used by the
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`network of base stations for providing wireless communications with mobile
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`stations for other purposes such as voice communication …” (id. at 8:2-10).
`
`GPS receivers may be employed, but not in mobile stations. Rather, such
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`receivers may be provided in various base stations. With respect to a mobile base
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`station MBS 148, which is shown in a vehicle in FIG. 4 (see also ’484 at 26:66-
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`27:2), a GPS receiver may be included in addition to a mobile station 140 (see id.
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`at 18:23-29; 27:5-22; 100:17-27), but not as part of the mobile station.
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`The GPS receiver is “for determining a location of the mobile location base
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`station” (id. at 18:28-29). This is reiterated at 27:17-18 (“the MBS 148 may
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`further contain a global positioning system (GPS)”); 100:23-27 (“In an enhanced
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`version of the mobile location unit, a GPS receiver may also be incorporated so
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`that the location of the mobile location unit may be determined and consequently
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`an estimate of the location of the target MS may also be determined.”); and
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`102:52-54 (“Thus, while in the ready state 1708, as the MBS 148 moves, it has its
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`location repeatedly (re)-estimated via, for example, GPS signals …”). Moreover,
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`in the discussion of the mobile base station architecture at 104:25-107:10, it is
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`indicated that the mobile base station MBS 148 may include a GPS receiver 1531
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`(id. at 104:65-66) and a GPS location estimator “for computing an MBS location
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`estimate using GPS signals” (see id. at 105:18-24).
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`Importantly, a mobile location base station MBS 148 is not a mobile station;
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`rather, it is a base station. As explained in the ’484 patent, “[t]he MBS 148 acts as
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`a low cost, partially-functional, moving base station, and is, in one embodiment,
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`situated in a vehicle where an operator may engage in MS 140 searching and
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`tracking activities.” (Id. at 26:66-27:2.) The ’484 specification emphasizes:
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`Moreover, it is important to note that such a mobile location base
`station as its name implies also includes base station electronics for
`communicating with mobile stations, though not necessarily in the
`manner of a conventional infrastructure base station.
`
`(Id. at 18:5-9; emphasis added.)
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`Thus, the ’484 patent points to the “fundamental problems” of including a
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`GPS receiver in a mobile station, and then discloses in detail a system in which a
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`mobile base station may include a GPS receiver, but a mobile station does not.
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`The ’484 patent itself does not disclose the specifics of the mobile station.
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`However, details of a mobile station are disclosed
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`in PCT Appl. No.
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`PCT/US/15933, which was published as WO 98/10538 (“PCT ’538”; Ex. 1008).
`
`This application was filed on the same day (September 8, 1997) as the parent PCT
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`’892 application, and is incorporated by reference in the ’484 patent at 12:30-44.
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`In PCT ’538, the mobile station is identified by the same reference numeral
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`as in the ’484 patent (i.e., 140). And in a section entitled “Mobile Station
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`Description” at 21:6-25:14, a conventional prior art mobile station is described in
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`connection with FIG. 15, which is reproduced below:
`
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`It is noted in PCT ’538 that “[r]eferring still to a CDMA mobile station 140, in one
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`embodiment of the present invention, the above-described standard CDMA mobile
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`station architecture in a mobile station 140 is sufficient.” (Id. at 23:28-29.) This
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`“standard” CDMA receiver does not include a GPS receiver.
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`PCT ’538 further discloses that the standard architecture “may be modified
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`in minor, cost effective ways so that additional information may be transmitted
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`from an [sic] mobile station 104 to the BS 122.” (Id. at 23:29-31.) This modified
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`mobile station is shown in FIG. 16 of PCT ’538, reproduced below; but again, this
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`mobile station does not include a GPS receiver. Thus, neither the ’484 patent nor
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`the incorporated-by-reference PCT ’538 application contains any disclosure of
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`including a GPS receiver in a mobile station.
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`B.
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`Prosecution History of the ’484 Patent and FCC Rule Changes
`1.
`Prosecution of the Parent (’367/PCT ’892) Application
`
`On September 8, 1997, PCT ’892 (i.e., the parent) was filed, claiming
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`priority to three provisionals. This PCT application was published on March 12,
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`1998 as WO 98/10307 (“PCT ’307”; Ex. 1003). The parent was filed with 124
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`claims (including independent claims 1, 55, 62, 72, 92, 101, 104, 106, 112, 116,
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`119, and 121) (see generally id. at 187-205) with the preamble of claim 1 reciting:
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`A method for locating wireless mobile stations using wireless signal
`measurements of wireless signals transmitted between said wireless
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`mobile stations and a network of base stations, wherein said base
`stations in the network are cooperatively linked for providing wireless
`communications with said wireless mobile stations, comprising:
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`(Ex. 1003 at 187.) Each of original claims 55, 62, 72, 92, 101, 104, 112, 116, 119,
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`and 121 included a substantially identical recitation in either the preamble or the
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`body of the claim being directed to using measurements of wireless signals
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`t
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