Filed on behalf of TRACBEAM, LLC
`By: Sean Luner
`DOVEL & LUNER
`
`
`201 Santa Monica Blvd, Suite 600
`
`Santa Monica, CA 90401
`
`Telephone (310) 656-7066
`
`sean@dovel.com
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`APPLE, INC,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01696
`Patent 7,525,484
`__________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,525,484 UNDER
`35 U.S.C. § 313 PURSUANT TO 37 C.F.R. § 42.107
`
`

`
`I.
`
`II.
`
`Case No. IPR2015-01696
`Patent 7,525,484
`
`
`
`Table of Contents
`Petitioner’s two grounds fail because neither PCT ‘307 nor FCC 99-
`245 is prior art. ................................................................................................. 1
`A. Reason 1: Petitioner does not satisfy its burden of identifying
`specific claim limitations in the challenged claims that it
`contends do not have sufficient written description support in
`the earlier ‘892 PCT and ‘367 applications. .......................................... 6
`B. Reason 2: What Petitioner asserts is missing from the
`underlying PCT ‘307 application—a “GPS handset”—is
`disclosed in the underlying application. .............................................. 12
`Petitioner fails to satisfy its burden of demonstrating that the
`challenged claims are unpatentable. .............................................................. 22
`A. Petitioner’s burden. ............................................................................. 22
`B. Ground 1. ............................................................................................. 26
`1.
`Petitioner’s discussion. ............................................................. 27
`2.
`Petitioner’s claim charts. ........................................................... 31
`3.
`Petitioner’s obviousness assertions. .......................................... 51
`C. Ground 2. ............................................................................................. 56
`III. Conclusion. .................................................................................................... 59
`
`i
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`Case No. IPR2015-01696
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`
`
`Table of Authorities
`
`Cases
`Amazon v. Personalized Media Communications,
`IPR2014-01533, Paper 16 (April 20, 2015) ................................................ 3, 4, 56
`Apple Inc. v. ContentGuard Holdings,
`IPR2015-00440, Paper 11, (July 13, 2015) .......................................................... 22
`Apple Inc. v. Sightsound Technologies, LLC.,
`CBM2013-00019, Paper 17 (October 8. 2013) .................................................... 11
`Billy Goat Industries, Inc., v. Schiller Grounds Care, Inc.,
`IPR2014-00742, Paper 8 (November 7, 2014) .............................................. 25, 56
`CallCopy, Inc. v. Verint Americas, Inc.,
`IPR2013-00492, Paper 14 (Feb. 5, 2014) ...................................................... 49, 58
`Cf.,DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) ................................................................................ 56
`Christie Medical Holdings, Inc. v. The Research Foundation of The City College of
`New York,
`IPR2015-00213, Paper 19 (September 18, 2015) ......................................... 24, 33
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 (August 29, 2014) ................................... 24, 33, 52, 54
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003) ............................................................................ 11
`Corning Incorporated v. DSM IP Assets B.V.,
`IPR2013-00048, Paper 94 (May 9, 2014) ............................................................ 56
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .............................................................................. 5
`FedEx Corp. v. IPVenture, Inc.,
`IPR2014-00833, Paper 24 (Feb. 20, 2015) .................................................. 4, 9, 11
`Focal Therapeutics, Inc. v. Senorx, Inc.,
`IPR2014-00116, Paper 8 (April 22, 2014) ............................................................. 7
`Google Inc. v. Unwired Planet, LLC,
`CBM2014-00006, Paper 31 (April 6, 2015) ........................................................ 11
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`Case No. IPR2015-01696
`Patent 7,525,484
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`
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (July 31, 2013) ........................................................... 51
`Hollmer v. Harari,
`681 F.3d 1351 (Fed. Cir. 2012) .............................................................................. 3
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 59
`Kloster Speedsteel AB v. Crucible, Inc.,
`793 F.2d 1565 (Fed. Cir. 1986) ............................................................................ 24
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 52, 54
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003, Paper 8 (Oct. 25, 2012) ..................................................... 8, 26
`LizardTech, Inc. v. Earth Resource Mapping, Inc.,
`424 F.3d 1336 (Fed. Cir. 2005) ............................................................................ 11
`Polaris Wireless v. TruePosition, Inc., IPR2013-00323,
`Paper 9 (November 15, 2013) ................................................................................ 7
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed.Cir.2001) .............................................................................. 11
`Samsung Electronics Co. et al v. Black Hills Media, LLC,
`IPR2014-00737, Paper 7 (November 4, 2014) ........................................ 52, 54, 55
`Sharp Corp. v. Surpass Tech Innovation,
`IPR2015-00022, Paper 9 (March 10, 2015) ......................................................... 59
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper 16 (Feb. 22, 2013) ................................................... passim
`Technology Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) .............................................................................. 5
`Tempur Sealy International, Inc. v. Select Comfort Corp.,
`IPR2014-01419, Paper 9 (March 27, 2015) ................................................. passim
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00152 Paper 8 (August 19, 2013) ........................................................ 23
`Wowza Media Systems, LLC and Coffee Cup Partners, Inc. v. Adobe Systems, Inc.,
`IPR2013-00054, Paper 16 (July 13, 2013) ........................................................... 23
`
`
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`Case No. IPR2015-01696
`Patent 7,525,484
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`
`
`Statutes
`35 U.S.C. § 103 ................................................................................................. 52, 54
`35 U.S.C. § 120 .......................................................................................................... 3
`35 U.S.C. § 314 .......................................................................................................... 4
`35 U.S.C. § 316 .......................................................................................................... 5
`
`Regulations
`37 C.F.R. § 42.104 ........................................................................................... passim
`37 C.F.R. § 42.22 ............................................................................................. passim
`
`
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`Case No. IPR2015-01696
`Patent 7,525,484
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`
`
`Exhibit List
`
`
`Exhibit No.
`2001
`
`Description
`Markman Order, dkt. #352, TracBeam, L.L.C., v. AT&T, Inc., et.
`al., Case 6:11-cv-00096 (E. D. Tx. January 23, 2013)
`
`
`
`
`v
`
`
`

`
`In this Petition for Inter Partes Review, Petitioner asserts two grounds:
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`Case No. IPR2015-01696
`Patent 7,525,484
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`Ground 1: that the challenged claims of the ‘484 Patent (except claim 43)
`
`are obvious based on PCT ‘307 (Ex. 1003) in view of FCC 99-245 (Ex. 1012); and
`
`Ground 2: that claim 43 is obvious based on PCT ‘307 (Ex. 1003) in view
`
`of both FCC 99-235 (Ex. 1012) and Stilp (Ex. 1032).
`
`Petitioner’s two grounds fail for two independent reasons.
`
`First, neither PCT ‘307 nor FCC 99-245 is prior art to the ‘484 Patent.
`
`Second, Petitioner fails to satisfy its burden of demonstrating that each
`
`element of the challenged claims is found in or rendered obvious by the asserted
`
`combination.
`
`Each reason is addressed in turn.
`
`
`
`I. Petitioner’s two grounds fail because neither PCT ‘307 nor FCC 99-245
`is prior art.
`
`Petitioner asserts that the underlying PCT ‘307 publication (Ex. 1003) and
`
`FCC 99-245 (Ex. 1012) are prior art to the ‘484 Patent. In doing so, Petitioner
`
`asserts that the ‘484 Patent is not entitled to the benefit of the filing date of the
`
`earlier-filed ‘892 PCT application (which was published as PCT ‘307) or the
`
`corresponding National Stage Filing ‘367 application (Ex. 1010). Pet. 3, 40.
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`1
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`According to Petitioner, the effective filing date of the ‘484 Patent is the
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`date that it was filed—January 26, 2001.
`
`As illustrated in the diagram above, and as reflected on the cover page of the
`
`patent, the ‘484 Patent claims priority to the underlying PCT ‘892 application, filed
`
`September 8, 1997 (which was published as PCT ‘307) and the corresponding
`
`National Stage Filing ‘367 application, which was filed November 24, 1998:
`
`
`
`
`
`‘484 Patent; cover page. If the ‘484 Patent is entitled to the benefit of the filing
`
`date of the earlier-filed ‘892 PCT application (September 8, 1997), the subsequent
`
`publication of that application the following March (March 12, 1998) cannot be
`
`prior art to the ‘484 Patent. And if the ‘484 Patent is entitled to the benefit of
`
`either the earlier-filed ‘892 PCT application (September 8, 1997) or the
`
`corresponding National Stage ‘367 application (November 24, 1998), the
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`subsequent FCC 99-245 (September 15, 1999) cannot be prior art to the ‘484
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`Case No. IPR2015-01696
`Patent 7,525,484
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`Patent. As demonstrated below, Petitioner’s assertion that the ‘484 Patent is not
`
`entitled to the benefit of either earlier filing date is wrong.
`
`“A claim in a patent application is entitled to the benefit of the filing date of
`
`an earlier filed, related application if it meets the requirements of 35 U.S.C. § 120.”
`
`Amazon v. Personalized Media Communications, IPR2014-01533, Paper 16 at 5
`
`(April 20, 2015) (citing Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012));
`
`35 U.S.C. § 120).
`
`Petitioner asserts that the challenged claims of the ‘484 Patent are not
`
`entitled to priority to the underlying ‘367 PCT and National Stage ‘367
`
`applications because there is no written description support in the earlier
`
`applications for the challenged claims:
`
`The ‘484 patent claims priority to the ‘367 application, filed as the
`‘892 application on September 8, 1997. However, the broad claims of
`‘484 patent are not entitled to priority to either application under 35
`U.S.C. § 120 because they lack written description support.
`Therefore, the effective date of each challenged claim of the ‘484
`patent is the patent’s actual filing date, i.e., January 26, 2001.
`Pet. 32.
`
`Petitioner has the overall burden of demonstrating that the challenged claims
`
`of the ‘484 Patent are not entitled to priority. “[P]etitioner is required to show a
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`reasonable likelihood of prevailing as to its overall challenge to a claim.” FedEx
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`Case No. IPR2015-01696
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`Corp. v. IPVenture, Inc., IPR2014-00833, Paper 24 at 3 (Feb. 20, 2015). “In an
`
`inter partes review, the burden is on the petitioner to show the sufficiency of a
`
`petition and to demonstrate a reasonable likelihood that it would prevail on a
`
`ground of unpatentability.” Amazon.Com, Inc. and Amazon Web Services, LLC v.
`
`Personalized Media Communications, LLC, IPR2014-01533, Paper 16 at 6 (April
`
`20, 2015) (citing 35 U.S.C. § 314(a); see 37 CFR § 42.22(a)(2), 42.104(b)(5)).
`
`While it is not presumed that a patent is entitled to the priority of an earlier
`
`application, to satisfy its burden of demonstrating that the ‘480 Patent is not
`
`entitled to priority to the underlying ‘367 PCT and National Stage ‘367
`
`applications, the Petition must include an “[1] identification of specific claim
`
`limitations in specific claims and [an] [2] unrebutted assertion that those
`
`limitations do not appear in the disclosures of any priority application.” FedEx
`
`Corp. v. IPVenture, Inc., IPR2014-00833, Paper 24 at 7 (Feb. 20, 2015)
`
`(enumeration added).
`
`Because the burden of persuasion is always on the Petitioner in an IPR, if
`
`Petitioner either (1) fails to identify the specific claim limitation that allegedly does
`
`not have sufficient written description in the underlying application or (2) Patent
`
`Owner adequately rebuts the challenge if specific limitations are identified, the
`
`Petitioner’s challenge fails. If there is uncertainty on either point—whether
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`Petitioner properly identified the specific claim recitations or whether Patent
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`Owner adequately identified support in the underlying application—the Petitioner
`
`fails to satisfy its burden:
`
`In an inter partes review, the burden of persuasion is on the petitioner
`to prove “unpatentability by a preponderance of the evidence,” 35
`U.S.C. § 316(e), and that burden never shifts to the patentee. “Failure
`to prove the matter as required by the applicable standard means that
`the party with the burden of persuasion loses on that point—thus, if
`the fact trier of the issue is left uncertain, the party with the burden
`loses.”
`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378-79
`
`(Fed. Cir. 2015) (quoting Technology Licensing Corp. v. Videotek, Inc., 545 F.3d
`
`1316, 1327 (Fed. Cir. 2008)).
`
`Petitioner has not (and cannot) satisfy its burden of demonstrating that the
`
`challenged claims of the ‘484 Patent are not entitled to priority—and that the PCT
`
`‘307 publication and FCC 97-402 are prior art—for two independent reasons:
`
`Reason 1: Petitioner fails to identify the specific claim limitations in the
`
`challenged claims that allegedly do not have sufficient written description support
`
`in the underlying PCT ‘892 and ‘367 applications; and
`
`Reason 2: The earlier PCT ‘892 and ‘367 applications disclose a “GPS
`
`handset” which, although not recited in the challenged claims, Petitioner asserts is
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`not disclosed in the applications. Each reason is addressed in turn.
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`Case No. IPR2015-01696
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`A. Reason 1: Petitioner does not satisfy its burden of identifying
`specific claim limitations in the challenged claims that it contends
`do not have sufficient written description support in the earlier
`‘892 PCT and ‘367 applications.
`
`To demonstrate that the ‘484 Patent is not entitled to the priority of the
`
`underlying ‘892 PCT and ‘367 applications, Petitioner must first identify the
`
`“specific claim limitations in the relevant challenged claims” that it contends are
`
`not found in the earlier ‘892 PCT and ‘367 applications. FedEx. Corp. v.
`
`IPVentures, Inc., IPR2014-00833, Paper 14 at 21 (December 3, 2014) (Petitioner
`
`“supports its contention as to the priority date of the challenged claims by
`
`identifying specific claim limitations that do not appear in any priority
`
`application.”).1
`
`A Petitioner cannot satisfy its burden by relying on generalizations but rather
`
`must identify specific “terms recited in the claims” that allegedly do not have
`
`sufficient written description in the underlying application, see, e.g.:
`
`• “Petitioner contends that the ‘221 application does not provide sufficient
`written description support for the following terms recited in claims 111 to
`114: (1) network transaction; (2) mobile origination transaction; (3) mobile
`termination transaction; (4) wherein said predefined network transaction
`comprises at least one of a mobile origination transaction and a mobile
`
`1 Emphasis added unless otherwise noted.
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`termination transaction; and (5) Mobile Station Identification (MSID)
`trigger.” Polaris Wireless v. TruePosition, Inc., IPR2013-00323, Paper 9 at
`28-29 (November 15, 2013);
`
`
`
`• “Focal Therapeutics contends that neither [of] the [ancestral applications]
`provides adequate § 112 support for the step of ‘directing a radiation beam’
`to an implant, “such that the radiation beam does not materially irradiate the
`whole of the breast,” as recited in independent claims 1 and 18.” Focal
`Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 10 (April 22,
`2014);
`
`• “we agree with Petitioner that the ’894 Patent Specification does not
`describe the negative portion of the limitation in claim 1 that recites
`“utilizing one or more objects in the Web application . . . to connect in real-
`time to the value-added network service of the Web merchant without
`executing Common Gateway Interface (CGI) scripts.’” SAP America, Inc. v
`Pi-Net International, Inc., IPR2014-00414, Paper 11 at 16 (August 18,
`2014).
`
`Here, Petitioner asserts that the underlying ‘892 PCT and ‘367 applications
`
`
`
`
`
`do not disclose a “GPS handset”:
`
`• “the scope of the claims of the ’484 patent far exceeds the scope of the
`
`disclosure of the parent application. As set forth in detail above, the parent
`
`PCT ’892 application does not contain any disclosure whatsoever of a GPS
`
`handset.” Pet. 34.
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`• “In view of the disclosure of the parent itself, as well as other applications
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`filed in the same time frame by Dr. Dupray, it is submitted that the parent
`
`application does not provide written description support of use of GPS
`
`handsets.” Pet. 40.
`
`
`
`Based on Petitioner’s assertions, one would expect to find a “GPS handset”
`
`limitation in each challenged claim of the ‘484 Patent. No “GPS handset”
`
`limitation, however, is found in any challenged claim. Indeed, no challenged claim
`
`even includes a “handset” limitation. Petitioner does not (and cannot) assert that
`
`there is no written description support in the underlying applications for the actual
`
`claim limitations recited in the challenged claims.
`
`Moreover, if Petitioner contends that “GPS handsets” are somehow recited
`
`in the challenged claims, then Petitioner’s burden was to specifically identify such
`
`claim limitations rather than shift the burden to the Board (or Patent Owner) to try
`
`to decipher what claim limitation Petitioner believes should be construed as a
`
`“GPS handset.” “[W]e will address only the basis, rationale, and reasoning put
`
`forth by the Petitioner in the petition and resolve all vagueness and ambiguity in
`
`Petitioner’s arguments against the Petitioner.” Liberty Mutual Ins. Co. v.
`
`Progressive Casualty Ins. Co., CBM2012-00003, Paper 8 at 10 (Oct. 25, 2012).
`
`The Petition improperly shifts the burden of deciphering Petitioner’s
`arguments onto Patent Owner and the Board, which, as we discussed
`
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`above, is contrary to the statutory and regulatory provisions governing
`inter partes review proceedings, as well as the best practices outlined
`in the Office Patent Trial Practice Guide.
`
`Whole Space Industries Ltd. v. Zipshade Industrial (B,V.I.) Corp., IPR2015-00488,
`
`Paper 14 at 18 (July 24, 2015) (citing 35 U.S.C. § 312 (a)(3); 37 C.F.R. §§
`
`42.22(a)(2), 42.104(b)(4)–(5)). Accordingly, Petitioner has failed to identify
`
`“specific claim limitations in the relevant challenged claims that do not appear in
`
`any priority application.” FedEx Corp. v. IPVenture, Inc., IPR2014-00833, Paper
`
`24 at 4 (Feb. 20, 2015).
`
`Rather than identifying specific claim limitations in the challenged claims
`
`and demonstrating that such claim limitations do not have sufficient written
`
`description support in the underlying applications, Petitioner asserts that:
`
`(a) the challenged claims “encompass” GPS handsets—“the challenged claims
`
`of the ‘484 patent broadly encompass the use of mobile stations that are GPS
`
`handsets” (Pet. 12);
`
`(b) there are no claim limitations that specifically “exclude” the transmission of
`
`GPS data—the challenged claims “do not contain any added limitations that
`
`in any way exclude such GPS handsets” (Pet. 29); and
`
`(c) there is no disclosure of “GPS handsets” in the underlying applications.
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`These assertions are legally and logically flawed, as illustrated by the following
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`Case No. IPR2015-01696
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`example.
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`Assume that: (a) a claim recites a “car;” (b) there is adequate written
`
`description in for “car” in the underlying application; (c) the underlying application
`
`does not specifically describe a car with four-wheel drive; and (d) the claims do
`
`not include any limitation that restricts the claims to exclude four-wheel drive cars.
`
`In this example, the claim term “car” is broad enough to encompass cars that both
`
`include and do not include four-wheel drive. Even though the term “car” is broad
`
`enough to encompass cars that both are and are not four-wheel drive, this would
`
`not mean that there is no support for the claim term “car” in the underlying
`
`application. If, however, the claim recited a “car with four-wheel drive,” there
`
`would not be support for this specific limitation because four-wheel drive is not
`
`disclosed in the underlying application.
`
`There are no requirements that (a) a specification describe all embodiments
`
`that are encompassed by the claims, or (b) claims include limitations that expressly
`
`exclude all embodiments other than the embodiments disclosed in the
`
`specification. Such requirements would effectively invalidate every patent under
`
`35 U.S.C. § Section 112—as it is impossible to describe all details of all
`
`embodiments that fall within the scope of a claim and are encompassed by the
`
`claim. “A claim will not be invalidated on section 112 grounds simply because the
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`embodiments of the specification do not contain examples explicitly covering the
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`full scope of the claim language.” LizardTech, Inc. v. Earth Resource Mapping,
`
`Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005); Apple Inc. v. Sightsound Technologies,
`
`LLC., CBM2013-00019, Paper 17 at 26 (October 8. 2013) (“A patent applicant is
`
`not required to describe in the specification every embodiment of the invention”)
`
`(citing LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345
`
`(Fed. Cir. 2005)); Google Inc. v. Unwired Planet, LLC, CBM2014-00006, Paper
`
`31 at 20-21 (April 6, 2015) (the disclosure need not “describe ‘every conceivable
`
`and possible future embodiment of [the] invention.’”) (quoting Cordis Corp. v.
`
`Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003)); Rexnord Corp. v.
`
`Laitram Corp., 274 F.3d 1336, 1344 (Fed.Cir.2001) (“An applicant is not required
`
`to describe in the specification every conceivable and possible future embodiment
`
`of his invention.”)
`
`Because Petitioner fails to identify any specific claim limitations for which
`
`there is allegedly no written description support, the burden of production does not
`
`shift to the Patent Owner and the challenged claims remain entitled to the filing
`
`dates of the earlier applications. See FedEx Corp. v. IPVenture, Inc., IPR2014-
`
`00833, Paper 24 at 6 (Feb. 20, 2015) (Petitioner “shifted the burden of production
`
`to [patent owner] by identifying the specific claim limitations for which written
`
`description support allegedly does not exist in the earlier priority applications.”).
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`Moreover, as demonstrated in the next section, the underlying applications
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`Case No. IPR2015-01696
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`do in fact disclose a “GPS handset.”
`
`B. Reason 2: What Petitioner asserts is missing from the underlying
`PCT ‘307 application—a “GPS handset”—is disclosed in the
`underlying application.
`
`If a petitioner identifies the specific claim limitations it contends do not have
`
`sufficient written description in the underlying application, the burden of
`
`production then shifts to the patent owner to rebut the challenge. FedEx Corp. v.
`
`IPVenture, Inc., IPR2014-00833, Paper 24 at 6 (Feb. 20, 2015) (petitioner “shifted
`
`the burden of production to [patent owner] by identifying the specific claim
`
`limitations for which written description support allegedly does not exist in the
`
`earlier priority applications.”).
`
`Had Petitioner identified “GPS handset” recitations in the challenged claims
`
`such that the burden of production would have shifted to Patent Owner, Patent
`
`Owner could demonstrate that the PCT ‘307 does disclose such recitations.
`
`PCT ‘307 includes a “Definitions” section that defines the term “mobile
`
`station” as “a wireless device that is at least a transmitting device, and in most
`
`cases a wireless receiving device, such as a portable radio telephone handset”:
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`PCT ‘307 at 11. Accordingly, under the PCT definition the term “mobile station”
`
`includes a “handset.” See also Judge Decl. (Ex. 1002) ¶23 (“mobile station (e.g., a
`
`handset / mobile phone)”).
`
`In addition, PCT ‘307 discloses that (a) the “mobile station” is synonymous
`
`with “location unit,” (b) and that an “enhanced version” of the disclosed “location
`
`unit” incorporates a “GPS receiver:”
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`This disclosure confirms that:
`
`• “the mobile location unit” (also called a “mobile station”) can include a GPS
`
`receiver—“a GPS receiver may also be incorporated,” and
`
`• although such a mobile location unit “may be difficult to accurately
`
`determine where the target MS is located,” “[n]one-the-less, such mobile
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`location units may be sufficient for many situations, and in fact the present
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`invention contemplates their use.”
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`PCT ‘307 at 102.
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`Petitioner asserts: “GPS receivers may be employed, but not in mobile
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`stations.” Pet. 13 (Petitioner’s emphasis). As demonstrated in the passages from
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`PCT ‘307 cited above, Petitioner’s assertion is wrong. PCT ’307 confirms that
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`“such mobile locations units [i.e., those that include the GPS receiver] may be
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`sufficient for many situations, and in fact the present invention contemplates their
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`use.” PCT ‘307 at 102.
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`Rather than addressing the most relevant evidence—the “definitions” section
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`in the underlying PCT ‘307—Petitioner focuses on distractions that are, at best,
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`minimally relevant to whether PCT ‘307 discloses GPS in connection with a
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`“mobile station” such as:
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`• a “contemporaneous provisional application” (Pet. 40);
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`• “actions taken by the FCC” (Pet. 35);
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`• “FCC’s E911 rules and regulations” (Pet. 37); and
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`• “other applications filed in the same time frame by Dr. Dupray” (Pet. 40).
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`In doing so, Petitioner makes three additional arguments why PCT ‘307 does not
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`provide written description support for a “GPS handset.” At the threshold, each
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`argument is irrelevant because, as explained above, the challenged claims do not
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`include “GPS handset” limitations. Moreover, had the claims recited a “GPS
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`handset,” each argument would still fail.
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`Petitioner’s argument 1: Petitioner asserts that the ‘484 Patent disparages
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`the use of GPS: “In the Background at 1:58-2:29, the use of GPS is criticized as
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`‘impractical in many applications,’ and specifically with respect to its use in
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`handsets.” Pet. 12. Petitioner’s argument here is irrelevant for two reasons.
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`First, whether the ‘484 Patent is entitled to the benefit of the earlier PCT
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`‘307 depends on whether PCT ‘307 discloses the recited claim elements, not
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`whether the ‘484 Patent criticizes claim elements as being impractical in many
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`applications. If PCT ‘307 adequately discloses a GPS handset, it is irrelevant
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`whether the subsequent U.S. application states that GPS may be impractical in
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`many applications.
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`Second, while the ‘484 specification contains a statement that GPS may be
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`impractical in many applications, the underlying PCT ‘307 specifically states that:
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`• GPS “may be sufficient for many situations, and in fact the present invention
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`contemplates their use” (PCT ‘307 at 102); and
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`• “in many terrains GPS technologies may be sufficiently accurate” (PCT
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`‘307 at 107:30-31).
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`Petitioner’s argument 2: Petitioner asserts that PCT ‘307 describes
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`embodiments that do not include a GPS receiver in a handset: PCT ‘307
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`“describes a system that does not include GPS in a handset.” Pet. 34-35
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`(Petitioner’s emphasis). Whether PCT ‘307 discloses embodiments that do not
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`include a GPS handset is not relevant if, in addition, it also discloses an
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`embodiment with a GPS handset. For example, if PCT ‘307 disclosed ten
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`embodiments and only one of those embodiments had a GPS receiver in a handset,
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`that single embodiment would provide sufficient written description support. As
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`demonstrated above, PCT ‘307 discloses at least one embodiment with a GPS
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`receiver (see, e.g., PCT ‘307 at 102), and thus it is irrelevant whether it discloses
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`other embodiments that do not involve a GPS receiver in a mobile station.
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`Petitioner’s argument 3: Petitioner asserts: PCT ‘307 discloses GPS in a
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`“mobile base station” but “a mobile location base station MBS 148 is not a mobile
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`station; rather, it is a base station.” Pet. 14 (Petitioner’s emphasis). This argument
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`fails at every level.
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`First, we need not rely upon the mobile base station embodiment to show
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`that PCT 307 discloses a “GPS handset.” As shown above, PCT ‘307 discloses a
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`GPS handset in the form of an “enhanced mobile location unit” that contains a
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`GPS receiver. PCT ‘307 at 102.
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`Second, a “mobile base station” falls within the definition and construction
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`of a “mobile station,” as used in PCT ‘307 and the ‘484 Patent. Therefore, the
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`disclosure of a “mobile base station” with a GPS receiver is a second independent
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`disclosure of a GPS mobile station in PCT ‘307.
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`As Petitioner acknowledges, PCT ‘307 clearly discloses GPS in a “mobile
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`base station” (MBS). See, e.g., Pet. 13-14 (“the mobile base station MBS 148 may
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`include a GPS receiver”) (citing PCT ‘307 104:65-66); Pet. 14 (“a mobile base
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`station may include a GPS receiver.”); PCT ‘307 at 17-18 (“In particular, a mobile
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`location base station can include…a GPS receiver for determining a location of the
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`mobile location base station”); PCT ‘307 at 28 (“[T]he MBS 148 may further
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`contain a global positioning system (GPS).”).
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`Petitioner argues that the “mobile base station” cannot be a “mobile station,”
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`but Petitioner does not address the definition of “mobile station” set forth in PCT
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`‘307 nor any other construction of “mobile station.” As explained below, both the
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`express definition of “mobile station” and any reasonable construction of the
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`phrase in the context of the ‘484 Patent (including the broadest reasonable
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`construction) confirm that a “mobile base station” that includes a GPS receiver can
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`function as and fall within the definition of a “mobile station.”
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`Definition: As set forth above, PCT ‘307 defined “mobile station” as “a
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`wireless device that is at least a transmitting device, and in most cases is also a
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`wireless receiving device”:
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`PCT ‘307 11. The “mobile base station” described in PCT ‘307, with a GPS
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`receiver, falls within this definition. A “mobile base station” is a “[1] wireless
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`device that is at least [2] a transmitting device” and is also a [3] “wireless receiving
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`device” and therefore falls within the definition “mobile station.”
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` [1] a wireless device (see, e.g., PCT ‘307 at 26 (“mobile base stations(s)
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`148” may communicate “utiliz[ing] one of the wireless technolog