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. IPR2015-01697
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
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`la-1312283
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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. IPR2015-01697
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
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`la-1312283
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`TABLE OF CONTENTS
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`IPR2015-01697
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`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`ARGUMENT .................................................................................................. 2
`A.
`Bruno discloses that “neither of the first and second position
`information is dependent upon the other,” as recited in claim 25 ....... 2
`Bruno discloses that “neither of the first and second position
`information varies substantially as a result in a change in the
`other,” as recited in claim 45 ................................................................ 6
`The Petition adequately identified teachings in Bruno that
`disclose the limitations of claim 49 ...................................................... 8
`III. CONCLUSION ............................................................................................. 11
`
`B.
`
`C.
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`IPR2015-01697
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`I.
`
`INTRODUCTION
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`Petitioner Apple Inc. (“Apple”) requests rehearing under 37 C.F.R
`
`§ 42.71(d) of the Board’s determination not to institute trial of claims 25, 45, and
`
`49 of U.S. Patent No. 7,525,484 (“the ’484 Patent” (Ex. 1001)) in view of U.S.
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`Patent No. 5,604,765 to Bruno et al. (“Bruno” (Ex. 1007)), alone or in combination
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`with U.S. Patent No. 5,602,903 to LeBlanc et al. (“LeBlanc” (Ex. 1009)).
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`In its February 17, 2016 Decision on Institution (Paper 8; “Decision”), the
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`Board determined that the following limitations of claims 25 and 45 distinguished
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`over Bruno:
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` “neither of the first and second position information is dependent
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`upon the other” (claim 25); and
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` “neither of the first and second position information varies
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`substantially as a result in a change in the other” (claim 45).
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`(Decision at 9-13.) The Board determined that Bruno did not disclose these
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`features primarily because Bruno’s circuitry is shared among different techniques.
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`But the listed claim limitations require that the determined position information
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`that is output from the location estimators be independent from one another, not
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`that the circuitry of the estimators be independent. Thus, it is respectfully
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`submitted that the Board misapprehended the teachings of Bruno as applied to
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`claims 25 and 45.
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`For claim 49, the Board determined that the Petition did not adequately
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`identify Bruno’s teachings for the elements of the claim, and instead made
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`references to “See above” and “See below.” (Decision at 11.) The elements of
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`claim 49 for which the Petition referenced “See above” are not unique to claim 49,
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`and are similar in scope to the limitations discussed above for claims 25 and 45.
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`Moreover, the “See above” and “See below” referrals were to immediately
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`adjacent limitations in the same claim to citations that readily disclose the
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`corresponding elements. Thus, Apple respectfully submits that the Petition
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`adequately identified the teachings of Bruno for all elements of claim 49.
`
`II. ARGUMENT
`A. Bruno discloses that “neither of the first and second position
`information is dependent upon the other,” as recited in claim 25
`
`Claim 25 requires that the position information outputted by first and second
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`location evaluators are independent from one another:
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`… 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[.]
`
`(Emphasis added.)
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`The Board confirmed this interpretation, stating that “by its terms,” claim 25
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`“requires that the first position information is independent of the second position
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`information, and that the second position information is independent of the first
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`position information.” (Decision at 9.) Thus, neither the plain language of
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`claim 25 nor the Board’s interpretation require that circuitry of the first and second
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`location evaluators be independent. Based on this understanding, Bruno discloses
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`the above-described limitation of claim 25.
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`As set forth in Apple’s Petition (Paper 2), Bruno discloses the use of GPS,
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`cellular, and RF Signposts techniques that are “independent” (Petition at 17) in that
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`none of their determined outputs “is dependent on the other,” as recited in claim 25
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`of the ’484 Patent. Figure 9 of Bruno, cited in the Petition and reproduced by the
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`Board on page 10 of its Decision, shows the structure of Bruno:
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`(Bruno, Fig. 9.)
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`As shown above in Figure 9 (to which coloring has been added), Bruno’s
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`circuitry processes (1) signals received from cellular towers (along the red path) to
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`estimate a device location (id. at 4:5-37), (2) signals received from GPS satellites
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`(along the blue path) to estimate a device location (id. at 2:20-25), and (3) signals
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`received from low-power RF Signposts (along the green path) to estimate a device
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`location (id. at 4:38-67).
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`The Board noted the use of shared and integrated circuitry in its discussion
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`of Bruno (Decision at 10). Claim 25, however, does not distinguish over Bruno’s
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`shared circuitry because claim 25 does not require independence among the
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`circuitry of the location evaluators.
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`Moreover, there is no disclosure in Bruno of shared circuitry causing
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`dependency among the outputs of the various techniques. The receiver circuitry
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`shown in Figure 9 of Bruno is GPS circuitry, some of which is shared to also
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`process the received cellular and RF Signpost signals. (Bruno, 9:2-4.) The shared
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`circuitry exists because the format of cellular and RF Signpost signals in Bruno is
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`“GPS-like” (id. at 2:49-50, 54) such that signals from all three techniques can be
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`processed using the same circuitry. (See id. at 3:63-66 (“Like GPS, the proposed
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`[cellular] navigation signal is a direct sequence spread spectrum waveform ...”).)
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`Thus, the sharing is a way to reuse circuitry for similarly formatted data of the
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`different techniques, and does not mean that the output of one technique “is
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`dependent on” the output of another technique.
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`Bruno repeatedly indicates that cellular location information can be used to
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`replace GPS location information. (Bruno, 2:41-44 (“The position determination
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`supported by this second element serves as a supplement or replacement of the
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`GPS system …”); see also id. at 3:52-56, 10:9-10.) The fact that an output of one
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`technique can be used to replace the output of another technique means that the
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`outputs are independent of one another. Apple identified the use of three separate
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`position determination elements in Bruno, citing, inter alia, to Figure 2 and the
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`description of “the 3 system elements” from 8:48-9:4. (Petition at 14, 16-17.)
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`The Board also referenced the cellular technique being slaved to the GPS
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`system. (Decision at 10-11; Bruno, 3:66-4:1.) This aspect of Bruno, however,
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`refers to base stations in Figure 7, and not the mobile station of Figure 9.
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`Specifically, slaving involves using the “the accurate GPS clock [] as a common
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`time base for all of the base stations.” (Bruno, 8:34-36.) The purpose of the
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`common time base is so that a mobile device can determine, through accurate and
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`synchronized base station timestamps, how long it takes for a message to travel to
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`or from a cellular base station. (Id. at 4:5-36.)
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`Thus, the use of slaved GPS timing information is not a disclosure that an
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`output of one location evaluator “is dependent” on the output of another evaluator.
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`First, the slaved timing information occurs at the base station of Figure 7, and
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`cannot be an output from a GPS technique on the mobile station of Figure 9.
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`Second, timing information is not a location estimate output from a GPS
`
`technique, but is instead ancillary data acquired from a GPS satellite. (Id. at 8:34-
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`36.) Therefore, Bruno’s disclosure of timing data slaved from a GPS system has
`
`no bearing on whether the determined position information output from one
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`evaluator “is dependent” on an output from another evaluator.
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`As set forth above, claim 25 of the ’484 Patent requires that an output from
`
`one location evaluator is independent from an output of another location evaluator.
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`Bruno discloses three estimation techniques (GPS, cellular, and RF Signposts) that
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`provide separate position determinations, such that one can replace another.
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`Sharing of circuitry or slaving to a GPS clock is not a teaching of dependence
`
`among the outputs. Thus, Apple requests that the Board reconsider and institute
`
`review of claim 25.
`
`B.
`
`Bruno discloses that “neither of the first and second position
`information varies substantially as a result in a change in the
`other,” as recited in claim 45
`
`Similar to claim 25, claim 45 of the ’484 Patent requires that position
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`information outputted from one technique is independent from position
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`information outputted from another technique:
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`… wherein for at least one location L of the mobile
`station, said first mobile station location technique and
`said second mobile station location technique output
`location information instances having, respectively, first
`and second position information for the mobile station
`being at L, wherein neither of the first and second
`position information varies substantially as a result in a
`change in the other[.]
`
`(Emphasis added.) Again, claim 45 does not require that circuitry of the
`
`techniques is independent. Based on this understanding, Bruno discloses the
`
`above-described limitation of claim 45.
`
`As discussed above with respect to claim 25, Bruno discloses GPS, cellular,
`
`and RF-signpost techniques for determining the location of a mobile station. The
`
`Board distinguished claim 45 over Bruno by noting the shared circuity and slaved
`
`GPS timing information in Bruno. (Decision at 13-14.) But as with claim 25,
`
`(1) the claims do not require independence among circuity, (2) the outputs of
`
`Bruno’s techniques can replace one another, demonstrating independence among
`
`the outputs, and (3) slaving of GPS clock data at base stations has no bearing on
`
`outputs of techniques at mobile stations. Thus, the Board should institute review
`
`on claim 45 based on Bruno in combination with LeBlanc.
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`C. The Petition adequately identified teachings in Bruno that disclose
`the limitations of claim 49
`
`The Board denied institution of claim 49 without substantive discussion,
`
`finding that Apple did not adequately identify the teachings of Bruno that disclose
`
`the claim limitations. The Board specifically pointed to instances in which Apple
`
`indicated “See above” or “See below” in its claim chart. (Decision at 11.) Apple
`
`respectfully requests the Board rehear its ruling on claim 49. The limitations for
`
`which Apple cited “See above” or “See below” are readily met by Bruno and
`
`identified by citations to Bruno for adjacent limitations in the same claim.
`
`Apple listed “See above” for a group of three related limitations of
`
`independent claim 49. Similar to claims 25 and 45 discussed above, this group
`
`requires “mobile station location estimators” outputting location estimates (i.e.,
`
`“likely geographical approximations”), where the outputted estimates are
`
`independent from one another (i.e., “without requiring a prior likely geographic
`
`location approximation generated by said second[/first] location estimator”). Thus,
`
`these features are not unique to claim 49, and as discussed above with respect to
`
`claims 25 and 45, are readily disclosed by Bruno.
`
`Moreover, the Petition included citations to address these features in
`
`claim 49. In fact, for the immediately previous claim limitation, the Petition stated
`
`that Bruno discloses location estimates from various techniques that are
`
`independent from one another:
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`(Petition at 22 (annotated).) Thus, the Petition did adequately identify teachings in
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`Bruno for the group of limitations requiring outputted location estimates
`
`independent from one another.
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`The Petition also indicated “See below” for one limitation, which the Board
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`also noted as a basis for denying institution of claim 49. But the limitation for
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`IPR2015-01697
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`which the Petition lists “See below” is not substantive, and is a pointer to other
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`alternative limitations. This is best demonstrated in the format of the published
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`patent claims, which could not be fully reproduced in the Petition claim chart
`
`because of space considerations (noting the prolix nature of the many claims of the
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`’484 Patent, which has some claims approaching a patent column in length):
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`
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`(’484 Patent, claim 49 (excerpted and annotated).) The “determining” step is
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`non-substantive in nature, and depends wholly upon steps (B1) and (B2). Thus,
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`the Petition included substantive citations for (B1) and (B2), and referenced those
`
`citations in the “determining” step by stating “See below.” Given the unorthodox
`
`structure of claim 49, these citations properly identify the portions of Bruno that
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`are relevant to the limitations of claim 49 of the ’484 Patent.
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`Because the Petition used “See above” and “See below” to reference
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`immediately adjacent claim elements that are germane to the corresponding claim
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`limitation, the Petition adequately identified the portions of Bruno relevant to each
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`limitation of claim 49. The Board should therefore institute review of claim 49 in
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`view of Bruno.
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`III. CONCLUSION
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`Out of the 13 claims denied institution by the Board, Apple seeks rehearing
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`on only two discrete issues. First, Bruno discloses the independence of location
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`technique outputs, as required by claims 25 and 45. And second, the Petition’s
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`citations to the elements of claim 49 were appropriate because they adequately
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`identified the relevant teachings of Bruno, especially in view of the lengthy and
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`unorthodox nature of this claim. Thus, in addition to the claims of the ’484 Patent
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`already instituted by the Board in this IPR (i.e., claims 51, 56, 57, 60, 61, and 63),
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`Apple respectfully requests that the Board also institute review of independent
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`claims 25, 45, and 49 of the ’484 Patent.
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`The USPTO is authorized to charge any required fees, including the fee as
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`set forth in 37 C.F.R. § 42.15(a) and any excess claim fees, to Deposit Account
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`No. 03-1952 referencing Docket No. 106840000509.
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`Dated: March 2, 2016
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`IPR2015-01697
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`Respectfully submitted,
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`By /David L. Fehrman/
`David L. Fehrman
`Registration No.: 28,600
`Martin M. Noonen
`Registration No.: 44,264
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`P: (213) 892-5601
`F: (213) 892-5454
`
`Attorneys for Petitioner Apple Inc.
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`IPR2015-01697
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached PETITIONER’S REQUEST FOR
`
`REHEARING UNDER 37 C.F.R. § 42.71(d) was served as of the below date by
`
`electronic mail, on the Patent Owner at the following correspondence address:
`
`By /David L. Fehrman/
`David L. Fehrman
`
`
`
`Sean Luner
`DOVEL & LUNER LLP
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP
`310 N. Westlake Blvd., Suite 120
`Westlake Village, CA 91362
`ssereboff@socalip.com
`
`
`
`Dated: March 2, 2016
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`
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