Filed on behalf of TRACBEAM, LLC
`
`By: Sean Luner
`
`DOVEL & LUNER, LLP
`
`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
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`__________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`By: Sean Luner
`
`DOVEL & LUNER, LLP
`
`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
`__________________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`__________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`Table of Contents
`Introduction. ..................................................................................................... 1
`I.
`Claim Construction. ......................................................................................... 2
`II.
`III. Petitioners have failed to satisfy their burden of demonstrating that
`Claim 1 is unpatentable. .................................................................................. 4
`A.
`The Petition fails to meet its burden as to Claim 1 ............................... 4
`1.
`“first obtaining” and “second obtaining” .................................... 4
`2.
`“wherein said steps of first and second obtaining includes
`a step of providing said first and second location inputs
`in a common standardized format” ............................................. 5
`The Decision .......................................................................................... 6
`B.
`Response to the Decision ...................................................................... 7
`C.
`IV. Conclusion ....................................................................................................... 8
`
`
`
`
`
`i
`
`
`
`Table of Authorities
`
`Cases
`Genetics Inst., LLC v. Novartis Vaccines and Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) .............................................................................. 1
`
`
`Guinn v. Kopf, 96 F.3d 1419 (Fed. Cir. 1996) ........................................................... 1
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2012-00003, Paper 8 (Oct. 25, 2012) ............................................................ 5
`
`
`
`ii
`
`
`
`Updated Exhibit List
`
`
`Exhibit No.
`2001
`2002
`2003
`2004
`
`2005
`
`Description
`The American Heritage Dictionary, p. 575 (3rd ed., 1994)
`Webster’s New World College Dictionary, p. 996 (4th ed., 2010)
`Narrowing Agreement
`Memorandum Opinion and Order entered 7/14/16 in TracBeam
`LLC v. T-Mobile US, Inc., et al., case no 6:14-cv-678 (E.D. Tex.)
`(“Markman Order”)
`Disclaimer in Patent Under 37 CFR 1.321(a) – Patent No.
`7,525,484 B2
`
`
`
`
`
`iii
`
`
`
`Introduction.
`This Inter Partes review is limited to review of claims 1 and 51 of the ‘484
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`I.
`
`
`
`patent, which are challenged as obvious under 35 U.S.C. § 103 in view of the
`
`Loomis-Wortham combination. IPR2015-01708, paper 10 (“Decision”). Patent
`
`Owner TracBeam appreciates the guidance provided by the Board in its Decision
`
`but respectfully maintains that Petitioners have failed to show that challenged
`
`claim 1 is obvious. Patent Owner also maintains that claim 51 was and is
`
`patentable. However, to conserve resources in these proceedings and the co-
`
`pending litigation, which is nearing trial, Patent Owner has disclaimed claim 51,
`
`thereby rendering this proceeding moot as to that claim. Ex. 2005.1
`
`1 The effect of the disclaimer is that claim 51 of the ‘484 patent is treated as
`
`
`if it had never existed. Genetics Inst., LLC v. Novartis Vaccines and Diagnostics,
`
`Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) (“upon entry of a disclaimer under §
`
`253, we treat the patent as though the disclaimed claim(s) had never existed”
`
`(internal quotations omitted)); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)
`
`(“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the
`
`claims from the patent and the patent is viewed as though the disclaimed claims
`
`had never existed in the patent” (emphasis added)). As a result, this proceeding is
`
`now moot—the Board need not and cannot determine whether a claim that is
`
`
`
`1
`
`
`
`II. Claim Construction.
`
`
`The Board did not issue any claim constructions for challenged claim 1 in its
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`Decision. Decision at 7-8. Since the Decision, the District Court in the pending
`
`infringement action issued a Markman Order that addresses challenged claim 1.
`
`Ex. 2004. The District Court’s constructions for the terms found in claim 1 are set
`
`forth below:
`
`Claim term or Phrase
`
`District Court Construction / Ruling
`
`mobile station
`
`“mobile wireless device that is at least a
`
`transmitting device and may include a
`
`receiving device” Ex. 2004 at 8, 26.
`
`location information
`
`No construction necessary. Id. at 9, 26.
`
`location estimating source
`
`Governed by Section 112, ¶6 and:
`
`“function is estimating mobile station
`
`locations; structure is a location center or
`
`mobile base station running location
`
`
`treated as having never existed is or is not patentable. Accordingly, Patent Owner
`
`anticipates seeking permission to file a motion to terminate this proceeding, to the
`
`extent such a motion is necessary.
`
`2
`
`
`
`Claim term or Phrase
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`District Court Construction / Ruling
`
`hypothesizing models (FOMs).” Id. at 16, 26.
`
`Patent Owner respectfully submits that the District Court’s rulings for
`
`
`
`“mobile station” and “location information” are correct under both the Phillips
`
`standard and the broadest reasonable interpretation standard and should be adopted
`
`by the Board. Patent Owner respectfully disagrees with the District Court’s
`
`analysis of the “location estimating source” term (under either standard) and
`
`submits that “location estimating source” should have been construed as “source
`
`(such as a computer system, device, or component) for estimating mobile station
`
`locations.” In addition, if “location estimating source” is construed as subject to
`
`Section 112, ¶6, Patent Owner respectfully submits the corresponding structure for
`
`“location estimating source” should be identified as “location hypothesizing model
`
`(e.g., a FOM) on a location center, mobile base station, or mobile station.”2
`
`
`
`
`2 For clarity, the mobile base station is itself a mobile station so there is
`
`some limited redundancy in this proposal.
`
`3
`
`
`
`III. Petitioners have failed to satisfy their burden of demonstrating that
`Claim 1 is unpatentable.
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`
`
`Patent Owner maintains the arguments asserted in its Preliminary Response.
`
`Paper 6 (“Prelim. Resp.”) at 6-9. Below we restate our arguments from the
`
`Preliminary Response and the Board’s Decision, and then respond to the Board.
`
`A.
`
`The Petition fails to meet its burden as to Claim 1.3
`1.
`“first obtaining” and “second obtaining.”
`
`
`
`Petitioners fail to meet their burden for the simple reason that they fail to
`
`actually identify any acts of “obtaining.” The act of “obtaining” something (in this
`
`case the instances of “location information”) requires acquiring or gaining
`
`possession of that thing. See, e.g., Exs. 2001-2002. The American Heritage
`
`Dictionary, p. 575 (3rd ed. 1994) (obtain: “v. 1. To succeed in gaining possession
`
`of; acquire.”); Webster’s New World College Dictionary, p. 996 (4th ed. 2010) (“1
`
`to get possession of, esp. by some effort; procure”).
`
`
`
`The Petition asserts that the “obtaining” limitations are met by determining
`
`location input. Pet. 31-32 (“the GPS and radio location coordinates/signal
`
`indicium (i.e., the first and second ‘location input’) can be determined (i.e.,
`
`‘obtained’) by either the mobile station itself or the central station”).
`
`3 For ease of reference, this section presents the arguments found at pages 6-
`
`9 of Patent Owner’s Preliminary Response.
`
`4
`
`
`
`Petitioners implicitly equate the act of “determining” the location inputs
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`
`
`with the act of “obtaining” those inputs. No attempt is made, however, to show or
`
`explain why “determining” should be considered the same thing as “obtaining” the
`
`inputs in the context of the ‘484 claims, or how determining would necessarily
`
`result in the recited act of obtaining. Accordingly, Petitioners’ assertion is
`
`insufficient to satisfy their burden. Liberty Mutual Insurance Co. v. Progressive
`
`Casualty Insurance Co., CBM2012-00003, Paper 8 at 10 (Oct. 25, 2012) (“[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”).
`
`2.
`
`“wherein said steps of first and second obtaining includes a
`step of providing said first and second location inputs in a
`common standardized format.”
`
`Claim element 1.6 (using the numbering used by Petitioners) states:
`
`“wherein said steps of first and second obtaining includes a step of providing said
`
`first and second location inputs in a common standardized format.” ‘484 col.
`
`171:44-46. Petitioners assert: “the GPS and radio location coordinates/signal
`
`indicium (i.e., ‘first and second location inputs’) are each represented as
`
`‘coordinate triples (x, y, z)’ along with an associated signal indicium value, and
`
`accordingly, they are both provided in the same format.” Pet. 34. Petitioners’
`
`assertion fails for two reasons.
`
`5
`
`
`
`First, the Petition provides no analysis of the “standardized” limitation and
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`fails to show that any standardized format is used in Loomis.
`
`
`
`Second, the Petition fails to show that the first and second location inputs are
`
`provided in any particular format, much less the same (i.e., a “common”) format.
`
`Showing that the inputs both include “coordinate triples” and signal indicium
`
`values merely indicates that the first and second location inputs contain the same
`
`type of contents; it does not show that those contents are instantiated into a data
`
`structure having the same format (standardized or otherwise). Accordingly,
`
`Petitioners fail to satisfy their burden as to this claim element.
`
`B.
`
`The Decision
`
`The Board rejected Patent Owner’s argument concerning the “obtaining”
`
`On the present record, we do not agree with the distinction Patent
`Owner draws. Calculating GPS and radio coordinates is one way of
`acquiring or gaining possession of those coordinates. Accordingly, we
`are persuaded that Petitioner is reasonably likely to show that Loomis
`and Wortham teach the “first obtaining” and “second obtaining”
`limitations of claim 1.
`Decision at 15.
`
`
`steps:
`
`
`
`
`The Board also rejected Patent Owner’s argument concerning the common
`
`standardized format limitation:
`
`6
`
`
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`Patent Owner does not explain persuasively why a coordinate triple is
`not a common standardized format. In any case, Loomis describes
`instantiating data into structures having that format:
`The controller 93 receives the present location coordinates
`(xu,yu,zu)rad of the user 12 from the radio LD signal
`(xu,yu,zu)out of the user 12 from the outdoor LD signal
`receiver/processor 85, and receives the indicia Irad and Iout, for
`comparison with the respective indicia thresholds Irad,thr and
`Iout,thr.
`
`Ex. 1008, 12:21–27. We are persuaded that Petitioner is reasonably
`likely to show that Loomis and Wortham teach providing the location
`inputs in a “common standardized format.”
`
`Decision at 16-17.
`
`
`C. Response to the Decision
`
`
`
`Patent Owner accepts the Board’s response concerning the “obtaining” steps
`
`but respectfully maintains that Petitioners have failed to show the use of a common
`
`standardized format. The Board states that “Loomis describes instantiating data
`
`into structures having that format.” Decision at 16. However, not every instance
`
`of data that is instantiated into a data structure having a format is data “in a
`
`common standardized format.” And there is no express or inherent disclosure in
`
`Loomis, or developed argument by Petitioners of obviousness, that any data
`
`structure in Loomis is common and “standardized.” Accordingly, Patent Owner
`
`respectfully requests that the Board reconsider its analysis and conclusion as to this
`
`limitation.
`
`7
`
`
`
`IV. Conclusion
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`For the foregoing reasons, the Board should reject Petitioners’ challenge to
`
`claim 1 and confirm that validity of this claim.
`
`Respectfully submitted,
`
`By:
`
`8
`
`
`
`Date: August 19, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Sean Luner/
`Sean Luner, Esq.
`Registration No. 36,588
`DOVEL AND LUNER
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
`
`
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`Certificate of Filing and Service
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S RESPONSE TO THE PETITION FOR INTER PARTES
`
`REVIEW PURSUANT TO 37 C.F.R. § 42.120 together with EXHIBITS 2004
`
`and 2005 are being filed via PTAB E2E and served by electronic mail this 19th day
`
`of August, 2016 on counsel for Petitioners as follows:
`
`Brian W. Oaks
`BAKER BOTTS, LLP,
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone (512) 322-5470
`Facsimile (512) 322-3621
`brian.oaks@bakerbotts.com
`
`Douglas M. Kubehl
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6486
`Facsimile (214) 661-4486
`doug.kubehl@bakerbotts.com
`
`Chad C. Walters
`BAKER BOTTS, LLP,
`2001 Ross Avenue
`Dallas, TX 75201
`Telephone (214) 953-6511
`Facsimile (214) 661-4511
`chad.walters@bakerbotts.com
`
`
`
`9
`
`
`
`
`
`
`
`
`
`/Sean Luner/
`Sean Luner, Esq.
`Registration No. 36,588
`DOVEL AND LUNER
`201 Santa Monica Blvd, Suite 600
`Santa Monica, CA 90401
`Main Telephone (310) 656-7066
`sean@dovel.com
`Counsel for Patent Owner
`
`Case No. IPR2015-01708
`Patent 7,525,484 B2
`
`
`
`
`Date: August 19, 2016
`
`
`
`
`
`
`
`
`
`
`10
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