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
`U.S. Patent No. 7,525,484
`
`__________________
`
`
`
`PETITIONERS’ REPLY
`TO PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`__________________
`
`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
`U.S. Patent No. 7,525,484
`
`__________________
`
`
`
`PETITIONERS’ REPLY
`TO PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 2
`II.
`III. CLAIM 1 IS OBVIOUS IN VIEW OF THE LOOMIS-WORTHAM
`COMBINATION ............................................................................................. 4
`A. The Board correctly ruled that Loomis discloses the “first obtaining”
`and “second obtaining” elements of claim 1. ......................................... 5
`1. The Board correctly found that Loomis’ disclosure of
`“determining” location input discloses the “obtaining” limitation
`of claim element 1.4 ....................................................................... 6
`2. The construction of “location estimating source” does not affect
`Loomis’ disclosure of claim element 1.4. ....................................... 8
`B. The Board correctly ruled that Loomis discloses the “common
`standardized format” element (1.6) of claim 1. ....................................13
`C. Patent Owner’s arguments that are incorporated by reference from the
`Preliminary Response are deficient and improper. ..............................15
`IV. CONCLUSION ..............................................................................................18
`
`
`
`
`
`
`
`i
`
`
`
`
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`
`Number
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`EXHIBITS1
`
`
`Description
`
`U.S. Patent No. 7,764,231 (the “’231 Patent”)
`
`U.S. Patent No. 7,525,484 (the “’484 Patent”)
`
`U.S. Patent No. 8,032,153 (the “’153 Patent”)
`
`U.S. Patent No. 7,298,327 (the “’327 Patent”)
`
`Curriculum Vitae of Dr. William Michalson
`
`Expert Declaration of Dr. William Michalson
`
`U.S. Patent No. 5,724,660 to Kauser (“Kauser”)
`
`U.S. Patent No. 5,936,572 to Loomis (“Loomis”)
`
`U.S. Patent No. 6,748,226 to Wortham (“Wortham”)
`
`International PCT Application No. PCT/US93/12179
`Schuchman (“Schuchman”)
`
`to
`
`U.S. Patent No. 5,327,144 to Stilp (“Stilp”)
`
`FAA Advisory Circular 20-101C, Airworthiness Approval of
`Omega/VLF Navigation Systems For Use in the U.S. National
`Airspace System (NAS) and Alaska (Sep. 12, 1988)
`
`
`1 Petitioners’ Reply uses the same exhibits provided in the Petition. No new
`
`exhibits have been added. Petitioners include this Exhibit List for the Board’s
`
`convenience.
`
`
`
`
`
`ii
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`FAA Advisory Circular 20-130A, Airworthiness Approval of
`Navigation or Flight Management Systems Integrating Multiple
`Navigation Sensors (Jun. 14, 1995)
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`FCC Notice of Proposed Rulemaking for Locating Wireless 911
`Callers (Released Oct. 19, 1994)
`
`TR45 Joint Experts Meeting (JEM) for Emergency Services (Aug.
`18, 1994)
`
`C.J. Driscoll & Associates, Survey of Location Technologies to
`Support Mobile 9-1-1, July 1994 (“Driscoll”)
`
`Claim Construction Order (MetroPCS and TCS lawsuits)
`
`Supplemental Claim Construction Order
`
`Complaint against MetroPCS
`
`Complaint filed by TCS
`
`Dismissal Request (MetroPCS and TCS lawsuits)
`
`Dismissal Order (MetroPCS and TCS lawsuits)
`
`MetroPCS Corporate Disclosure Statement (MetroPCS lawsuit)
`
`American Heritage Dictionary, Houghton Mifflin Company (4th
`ed. 2000) (definition of “locus”)
`
`
`
`
`
`iii
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`I.
`
`INTRODUCTION
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`
`Petitioners T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication
`
`Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson (collectively
`
`“Petitioners”) submit this Reply to Patent Owner TracBeam’s (“Patent Owner” or
`
`“TracBeam”) Response to the Petition for inter partes review (“IPR”) of claim 1 of
`
`U.S. Patent No. 7,525,484 (“the ’484 Patent”) to Dupray et al., titled “Gateway and
`
`Hybrid Solutions for Wireless Location.” (See Ex. 1002.)
`
`Patent Owner’s Response reiterates the same deficient arguments that the
`
`Board already rejected when it instituted an IPR of claim 1. (See Decision to
`
`Institute Inter Partes Review, Paper No. 10 (hereinafter “Decision”) at 14-17.)
`
`Patent Owner has added no new evidence to support its position, either in the form
`
`of an expert declaration or cross-examination testimony of Petitioners’ expert, Dr.
`
`Michalson. With the exception of the District Court’s claim construction ruling
`
`(Ex. 2004), the record that the PTAB relied on when instituting this inter partes
`
`review, is the same record now before the Board. (See Decision at 23 (“On the
`
`current record, we are persuaded that Petitioner has established likelihood that it
`
`would prevail with respect to claim 1 as obvious over Loomis and Wortham.”))
`
`Nevertheless, this Reply addresses each of Patent Owner’s arguments in its
`
`Response, i.e., (1) Patent Owner disagrees with the District Court’s construction of
`
`the “location estimating source” term; (2) Petitioners allegedly fail to identify any
`
`
`
`
`
`1
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`acts of “obtaining”; (3) Petitioners allegedly fail to satisfy their burden as to claim
`
`element 1.6; and (4) Petitioners allegedly have failed to show the use of a common
`
`standardized format. (See generally Response at 3-7.). As explained in the
`
`Petition and described in further detail below, none of these arguments has merit
`
`and thus claim 1 of the ’484 Patent is rendered obvious under 35 U.S.C. § 103 in
`
`view of U.S. Patent No. U.S. Patent 5,936,472 to Loomis (“Loomis”) in view of
`
`U.S. Patent No. 6,748,226 to Wortham (“Wortham”). All other arguments not
`
`raised in the Response are waived by the Patent Owner. (Scheduling Order, Paper
`
`11 at 4 (Feb. 8, 2016).)
`
`II. CLAIM CONSTRUCTION
`As part of its institution decision, the Board determined that no claim term
`
`from claim 1 required express construction. (Decision at 7-8.) As explained in the
`
`Patent Owner’s Response, since the institution decision, the District Court
`
`construed several terms recited by claim 1. (Response at 2-3; see also Ex. 2004.)
`
`Patent Owner summarily concludes that the Board should adopt the District
`
`Court’s claim constructions, but provides no explanation regarding why such
`
`constructions are proper—under the broadest reasonable interpretation standard or
`
`otherwise—or why several of the construed terms are relevant to issues in this
`
`proceeding.
`
`For example, Patent Owner makes the conclusory statement that the District
`
`
`
`
`
`2
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`Court’s construction of “location information” and “mobile station” are “correct
`
`under both the Phillips standard and the broadest reasonable interpretation standard
`
`and should be adopted by the Board.” (Response at 3.) However, neither term
`
`forms the basis of an argument by either party in this IPR. Accordingly, it is not
`
`necessary for the Board to construe these terms. (See Decision at 7-8; see also
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`(“Only terms which are in controversy need to be construed, and then only to the
`
`extent necessary to resolve the controversy.”).)
`
`The District Court also construed the term “location estimating source,” as
`
`“Governed by Section 112, ¶ 6 and: [the] function is estimating mobile station
`
`locations; [and the] structure is a location center or mobile base station running
`
`location hypothesizing models (FOMs).” (Response at 2-3; see also Ex. 2004.)
`
`Patent Owner asserts that the District Court’s analysis is incorrect under either
`
`standard and argues that “location estimating source” should have been construed
`
`as “source (such as a computer system, device, or component) for estimating
`
`mobile station locations.” (Response at 3). Further, Patent Owner asserts that to the
`
`extent this term is construed as a means-plus-function term, the corresponding
`
`structure should be “location hypothesizing model (e.g., a FOM) on a location
`
`center, mobile base station, or mobile station.” Id. Similar to the other two terms
`
`construed by the District Court, the term “location estimating source” does not
`
`
`
`
`
`3
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`form the basis of an argument by either party in this IPR. Accordingly, it is not
`
`necessary for the Board to construe it. (See Decision at 7-8; see also Vivid Techs.,
`
`200 F.3d at 803.)
`
`Finally, whether the Board agrees with the District Court or with Patent
`
`Owner does not affect the invalidity of the ’484 Patent. As explained further
`
`below, under either the District Court’s construction or Patent Owner’s
`
`constructions, Loomis discloses a “location estimating source.”
`
`III. CLAIM 1 IS OBVIOUS IN VIEW OF THE LOOMIS-WORTHAM
`COMBINATION
`
`
`
`Patent Owner’s Response merely repeats many of the same positions argued
`
`in its Preliminary Response that the Board has already reviewed and rejected. For
`
`example, in Patent Owner’s Preliminary Response, Patent Owner argued for the
`
`claim elements requiring “obtaining a first location input,” that Loomis’ disclosure
`
`of determining location coordinates is insufficient. (Response at 4.) The Board
`
`rejected this argument, explaining that calculating coordinates is one way to
`
`acquire or obtain those coordinates. (Decision at 15.) The Board then explained
`
`how the Petition’s analysis provided a reasonable likelihood that the Loomis-
`
`Wortham combination disclosed each of the disputed elements of claim 1.
`
`(Decision at 14-17.)
`
`Although the Board has already rejected Patent Owner’s arguments, section
`
`
`
`
`
`4
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`III.A and III.B below address how the Loomis-Wortham combination discloses the
`
`“first obtaining” and “second obtaining” elements of claim 1 and the “wherein said
`
`steps of first and second obtaining includes a step of providing said first and
`
`second location inputs in a common standardized format” limitation of claim
`
`element 1.6. Finally, in section III.C, Petitioners address the arguments made by
`
`Patent Owner in the Preliminary Response that are now improperly incorporated
`
`by reference into the Response.
`
`A. The Board correctly ruled that Loomis discloses the “first
`obtaining” and “second obtaining” elements of claim 1.
`
`Claim element 1.4 of the ’484 patent recites:
`
`first obtaining a first location input obtained using an instance,
`I1, of location information from said first location estimating source,
`wherein I1 is indicative of one or more locations of said first wireless
`mobile station, and
`second obtaining a second location input obtained using an
`instance, I2, of location information provided from said second
`location estimating source, wherein I2 is indicative of one or more
`locations of said first wireless mobile station[.]
`
`
`
`
`As explained in the Petition, these “first obtaining” and “second obtaining”
`
`elements are met in Loomis’ disclosure of its outdoor (GPS) LD module and radio
`
`LD module each determining their respective location coordinates and signal
`
`indicium. (Petition at 30.) Specifically, the outdoor (GPS) LD module (i.e., “first
`
`
`
`
`
`5
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`location estimating source”) determines GPS location coordinates (represented as
`
`(xu,yu,zu)out) and signal indicium (represented as Iout) (i.e., “obtaining a first
`
`location input”). (Petition at 30; see also Ex. 1008 at Abs., 12:21-27, 19:42-47,
`
`20:14-16, 21:48-57.) Similarly, the radio LD module (i.e., “second location
`
`estimating source”) determines radio
`
`location coordinates (represented as
`
`(xu,yu,zu)rad) and signal indicium (represented as Irad) (i.e., “obtaining a second
`
`location input”). (Petition at 30; see also Ex. 1008 at 12:21-27, 5:65–6:4.)
`
`1.
`
`The Board correctly found that Loomis’ disclosure of
`“determining” location input discloses the “obtaining”
`limitation of claim element 1.4
`
`
`
`In its Response, Patent Owner reiterates its argument from the Preliminary
`
`Response, arguing that “the act of ‘obtaining’ something (in this case the instances
`
`of ‘location information’) requires ‘acquiring or gaining possession of that thing’”
`
`and that Loomis’ disclosure of “determining” location input is insufficient.
`
`(Response at 4.) However, the Board’s institution decision correctly rejected this
`
`argument, explaining:
`
`that
`to Patent Owner, Petitioner has not shown
`According
`‘determining’ location information constitutes ‘obtaining’ location
`information. 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
`
`
`
`
`
`6
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`
`reasonably likely to show that Loomis and Wortham teach the ‘first
`obtaining’ and ‘second obtaining’ limitations of claim 1.
`
`(Decision at 15.) Thus, the Board fully considered Patent Owner’s argument and
`
`does not agree. Further, Patent Owner has added no new evidence or argument to
`
`support its position, and thus the record that the PTAB relied on when instituting
`
`this inter partes review for this claim element, is the same record now before the
`
`Board. (See Decision at 15 (“On the present record, we do not agree with the
`
`distinction Patent Owner draws.” (emphasis added)).)
`
`
`
`Moreover, Patent Owner’s argument is undermined by the ’484 Patent’s own
`
`use of the word “obtain” as a synonym for determining a location input by
`
`performing a location technique. For example, the ’484 Patent states: “A relatively
`
`straightforward application of this technique is to . . . (b) obtain new location
`
`estimates by subtracting from each of the areas of intersection any of the
`
`reliable RF coverage area representations for base stations 122 that can not be
`
`detected by the target MS.” (Ex. 1002 at 65:11-14 (emphasis added); see also id.
`
`at 62:62-64 (“In some embodiments of distance models, the target MS location
`
`estimate(s) generated are obtained using radio signal analysis techniques . . . .”
`
`(emphasis added)).) Thus, the ’484 Patent uses the term “obtain” to describe a
`
`technique (i.e., subtracting data) that is used to determine a location estimate. As
`
`another example, the ’484 Patent states: “Using TOA and/or TDOA ranges as
`
`
`
`
`
`7
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`exemplary, these ranges can then be input to either the radius-radius multilateration
`
`or the time difference multilateration algorithms along with the known positions
`
`of the corresponding base stations 122 to thereby obtain one or more location
`
`estimates of the target MS 140.” (Ex. 1002 at 63:25-30 (emphasis added).) Thus,
`
`the ’484 Patent also equates using algorithms to determine a location estimate with
`
`“obtain[ing].”
`
`Finally, Petitioners note that Patent Owner’s response is inconsistent on
`
`whether it disagrees with the Board’s finding that Loomis discloses these elements.
`
`First, as outlined above, Patent Owner reiterates its argument from the Preliminary
`
`Response, arguing that Petitioners failed to meet their burden that Loomis discloses
`
`the “first obtaining” and “second obtaining” of claim 1. (Response at 4.)
`
`However, three pages after, the Response states “Patent Owner accepts the Board’s
`
`response concerning the ‘obtaining’ steps.” (Response at 7.) Because the Patent
`
`Owner accepted the Board’s findings, it appears that there is no disagreement on
`
`whether Loomis discloses this claim element.
`
`2.
`
`The construction of “location estimating source” does not
`affect Loomis’ disclosure of claim element 1.4.
`As explained above, the District Court construed the term “location
`
`estimating source” and Patent Owner disagrees that the District Court’s
`
`construction should be adopted in this IPR. (Response at 3.) Because this term
`
`
`
`
`
`8
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`does not form the basis of an argument by either party in this IPR and Patent
`
`Owner does not argue that its proposed construction affects the outcome of the
`
`IPR, Petitioners assert that this term does not require any construction. (See Vivid
`
`Techs., 200 F.3d at 803.) However, for the sake of completeness, Petitioner will
`
`address the disclosure of the claimed first and second “location estimating
`
`source[s]” under any possible construction.
`
`As explained in the Petition, under the plain and ordinary meaning of
`
`“location estimating source,” Loomis discloses two such “location estimating
`
`source[s],” (e.g., the radio and GPS techniques) that are each used to determine the
`
`location of devices in Loomis’ system. (Petition at 30.) Specifically, the Petition
`
`states:
`
`Loomis’ outdoor (GPS) LD module (i.e., “first location estimating
`source”) determines GPS
`location coordinates (represented as
`(xu,yu,zu)out) and signal indicium (represented as Iout). . . . As explained
`in Section IX.D.3 (Satellite/Non-Terrestrial GPS Technique), the GPS
`coordinates and signal indicium . . . are calculated using pseudorange
`measurements from GPS satellite signals
`.
`.
`.
`, which are
`measurements corresponding to the range of the GPS receiver from
`each satellite in space[.]
`
`(Petition at 28, 30-31; see also Ex. 1008 at Abs., 12:21-27, 19:42-47, 20:14-16,
`
`21:48-57, 7:9-22, 16:52-55, 22:57-23:13, 17:1-7; Expert Decl. § X.C.2.) The
`
`Petition also explains the radio LD system:
`
`
`
`
`
`9
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`
`Loomis’ radio LD module (i.e., “second location estimating source”)
`determines radio location coordinates (represented as (xu,yu,zu)rad) and
`.
`.
`. As explained
`in
`indicium (represented as Irad).
`signal
`Section IX.D.4 (Terrestrial Radio Technique), the radio coordinates
`and signal indicium . . . are calculated using phase measurements of
`the radio signals . . ., which are measurements corresponding to the
`distance of the mobile station to the radio LD towers[.]
`
`(Petition at 30-31; Ex. 1008 at 12:21-27, 5:65-6:4, 6:25-29, 6:41-55, 9:17-30, 9:61-
`
`67, 11:55-65; Expert Decl. § X.D). As the Petition explains, both the GPS
`
`technique and radio technique use different methods to determine the location
`
`coordinates of the mobile station. Thus, based upon the plain and ordinary
`
`meaning of “location estimating source,” Loomis discloses both the “first” and
`
`“second” “locating estimating source[s].”
`
`Regardless of whether the Board determines that a construction is needed
`
`and accepts one of the constructions presented in the Response, this will not affect
`
`the invalidity of the ’484 Patent because Loomis discloses these elements under
`
`each construction. Patent Owner has introduced three potential alternative
`
`constructions: (1) the District Court’s construction of the term as a means-plus-
`
`function limitation where the “function is estimating mobile station locations; [and
`
`the] structure is a location center or mobile base station running location
`
`hypothesizing models (FOMs)”; (2) Patent Owner’s preferred non-means-plus-
`
`
`
`
`
`10
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`function construction of a “source (such as a computer system, device, or
`
`component) for estimating mobile station locations,” and (3) Patent Owner’s
`
`alternative means-plus-function construction where the corresponding structure is a
`
`“location hypothesizing model (e.g., a FOM) on a location center, mobile base
`
`station, or mobile station” instead of the structure identified by the District Court.
`
`(Response at 3.)
`
`The ’484 Patent refers to “location hypothesizing models” as “First Order
`
`Models” or “FOMs.” (Ex. 1002, Col. 13, ll. 31-35.) Each location hypothesizing
`
`model or FOM uses a different location technology to generate a “location
`
`hypothesis.” (Id.) For example, each location hypothesizing model may use one
`
`of the location technologies, such as coverage area, angle of arrival, time of arrival,
`
`or time difference of arrival to determine the location coordinates. (Id. at Col. 51, l.
`
`52-Col. 54, l. 67 (explaining various types of FOMs).) A location hypothesis may
`
`also include additional information, such as a “confidence value” indicating the
`
`likelihood of the mobile station being at or within the estimated location. (Ex.
`
`1002, Col. 13, ll. 37-51.) Thus, as explained above, the radio technique and GPS
`
`technique of Loomis, which each use different location technologies to determine
`
`location coordinates (e.g., “location hypothesis” determined by the FOMs) and
`
`signal indicium (e.g., “confidence value” determined by the FOMs), disclose the
`
`“location hypothesizing models” or “FOMs” of the ’484 Patent.
`
`
`
`
`
`11
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`Further, Loomis’ disclosure of a central station determining the location of
`
`devices using two techniques discloses “location hypothesizing models” under any
`
`of these three alternative constructions. Indeed, Patent Owner does not dispute that
`
`Loomis’ radio and GPS techniques disclose the claimed “location hypothesizing
`
`models” under any possible construction of this term. Thus, it does not appear that
`
`the construction of this term is relevant to this proceeding.
`
`In any case, the Petition explains that Loomis discloses a central station
`
`receiving signals from a mobile device and using the location techniques to
`
`determine the mobile device’s location:
`
`The location coordinates and signal indicium from the GPS and radio
`techniques (i.e., the “first location input” and “second location input”)
`can be calculated by the mobile station itself, or the GPS signal
`measurements (i.e., “an instance, I1, of location information”) and
`radio signal measurements (i.e., “an instance, I2, of location
`information”) can be sent “unprocessed, partly processed or fully
`processed” to a central processing station, which can perform the
`location calculations. (Ex. 1008 (Loomis) at 8:29-24, 20:29-42.)
`Thus, 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. (Id.)
`
`(Petition at 31-32 (emphasis added); see id. at 20, 46-49; see also Expert Decl. §
`
`X.B.; Ex. 1008 at 8:29-24, 15:20-24; 20:29-42.)
`
`
`
`
`
`12
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`First, this disclosure satisfies the District Court’s construction because it
`
`discloses estimating the mobile station’s location (e.g., function) with a central
`
`station using both radio and GPS techniques (e.g., the structure of “a location
`
`center . . . running location hypothesizing models (FOMs).”). Thus, the central
`
`station of Loomis discloses the “location center” of the construction, while the
`
`radio and GPS techniques disclose the “location hypothesizing models (FOMs)”
`
`aspect of the construction. Similarly, Loomis’ disclosure of the central station
`
`using the GPS and radio techniques to determine the location of the mobile station
`
`further satisfies the Patent Owner’s contention that the correct structure is “location
`
`hypothesizing model (e.g., a FOM) on a location center” because both radio and
`
`GPS techniques (e.g., FOMs) are used on the central station (e.g., location center).
`
`Finally,
`
`this disclosure satisfies Patent Owner’s assertion
`
`that “location
`
`hypothesizing model” is a “source (such as a computer system, device, or
`
`component) for estimating mobile station locations” because the central station is a
`
`computer system that uses its radio and GPS techniques to determine the mobile
`
`station’s location. Thus, under any of the proposed constructions of the term
`
`“location hypothesizing model,” if such a construction is needed, Loomis discloses
`
`this claim element.
`
`B.
`
`The Board correctly ruled that Loomis discloses the “common
`standardized format” element (1.6) of claim 1.
`
`
`
`
`
`13
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`Claim element 1.6 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.” As explained in the Petition, Loomis’ outdoor LD module
`
`provides the GPS location coordinates in the format (xu,yu,zu)out and the GPS signal
`
`indicium in the format Iout (collectively, the “first location input”), and Loomis’
`
`radio LD module provides the radio location coordinates in the format (xu,yu,zu)rad
`
`and the radio signal indicium in the format Irad (collectively, the “second location
`
`input”). (Petition at 33; see also Ex. 1008 at 12:21-27, 9:31-36; Expert Decl. §
`
`X.H.8.) Further, Dr. Michalson explains that “each location input (outdoor and
`
`radio) include a coordinate triple representation of the mobile device and a
`
`corresponding signal indicia which a person of ordinary skill in the art would
`
`understand to represent ‘a common standardized format’ of the location input.”
`
`(Expert Decl. § X.H.8.) Thus, Loomis’ coordinate triples disclose the “common
`
`standardized format” limitation of claim element 1.6.
`
`Patent Owner reiterates two of its arguments from its Preliminary Response.
`
`First, Patent Owner argues that “the Petition provides no analysis of the
`
`‘standardized’ limitation and fails to show that any standardized format is used in
`
`Loomis.” (Response at 6-7.) Second, Patent Owner argues that in Loomis “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
`
`
`
`
`
`14
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`not show that those contents are instantiated into a data structure having the same
`
`format.” (Response at 6-7.)
`
`
`
`However, the Board’s institution decision correctly rejected this argument,
`
`explaining:
`
`Patent Owner does not explain persuasively why a coordinate tripe is
`not a common standardized format. In any case, Loomis describes
`instantiating data into structures having that format . . . . 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 7.) Thus, the Board fully considered Patent Owner’s argument
`
`and rejected it. Further, Patent Owner has added no new evidence to support its
`
`position, either in the form of an expert declaration or cross-examination testimony
`
`of Petitioners’ expert, Dr. Michalson. Thus, for the reasons explained above,
`
`Petitioners respectfully assert that the Board issue a final decision finding that this
`
`claim element is disclosed by Loomis.
`
`C.
`
`Patent Owner’s arguments that are incorporated by reference
`from the Preliminary Response are deficient and improper.
`
`Patent Owner’s Response incorporates several arguments by from the
`
`Preliminary Response. (Response at 2 (“Patent Owner maintains the arguments
`
`asserted in its Preliminary Response.”) (emphasis added).) However, one
`
`argument from the Preliminary Response was not developed and presented in
`
`
`
`
`
`15
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`Patent Owner’s Response. To the extent Patent Owner maintains any other
`
`arguments that are not addressed in its Response, incorporating arguments by
`
`reference from a preliminary response into a response is prohibited. (See 37 C.F.R.
`
`§ 42.6(a)(3) (“[a]rguments must not be incorporated by reference from one
`
`document into another document”); see also Apple, Inc. v. Ameranth, CBM2015-
`
`00080, Final Written Decision, Paper 44, Aug. 26, 2016 (“Arguments that are not
`
`developed and presented in the Patent Owner Response, itself, are not entitled to
`
`consideration.”) (emphasis added).) While these incorporated-by-reference
`
`arguments have been waived and are not entitled to consideration by the Board,
`
`Petitioners nevertheless explain how the unaddressed arguments from the
`
`Preliminary Response are deficient.
`
`The Preliminary Response provided an additional argument for claim
`
`element 1.4, which states:
`
`first obtaining a first location input obtained using an instance,
`I1, of location information from said first location estimating source,
`wherein I1 is indicative of one or more locations of said first wireless
`mobile station, and
`second obtaining a second location input obtained using an
`instance, I2, of location information provided from said second
`location estimating source, wherein I2 is indicative of one or more
`locations of said first wireless mobile station[.]
`
`
`Specifically, the Preliminary Response stated that if the Board instituted an
`
`
`
`
`
`16
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`IPR on claim 1, that Patent Owner would “demonstrate” that the “first obtaining”
`
`and “second obtaining” steps must be performed in order and that Loomis fails to
`
`disclose such an order. (Prelim. Resp. at 7.) In its Institution Decision, the Board
`
`addressed Patent Owner’s argument, finding that “[A]t this stage, Patent Owner
`
`has not put forward evidence or argument to support limiting the steps of claim 1
`
`to a specific order, or to show that the prior art fails to teach this order.” (Decision
`
`at 8.) Although claim 1 has been instituted, Patent Owner has added no new
`
`evidence to support its position, failed to demonstrate how the first and second
`
`obtaining steps must be performed, and has not provided any argument explaining
`
`how Loomis allegedly fails to disclose an order based on this construction. (See
`
`generally Response.)
`
` In any event, Petitioners proactively addressed this argument in the section
`
`of the Petition addressing element 1.4. (Petition at 30-32.) The Petition explains
`
`that the order that the location techniques are performed in Loomis does not matter.
`
`While the initial analysis for claim element 1.4 identifies the outdoor (GPS) LD
`
`module as the “first location estimating source” and the radio LD module as the
`
`“second location estimating source,” the Petition also explains that alternatively
`
`the radio LD module can be the “first location estimating source” and the outdoor
`
`(GPS) LD module can be the “second location estimating source.” (Petition at 32).
`
`Claim element 1.5 makes clear that claim 1 only requires that the two “location
`
`
`
`
`
`17
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`Case No. IPR2015-01708
`Patent 7,525,484
`
`estimating sources” each employ a “different” “location finding technology,” and
`
`thus Loomis’ GPS and radio modules can each satisfy either the “first location
`
`estimating source” or the “second location estimating source.”
`
`Finally, Loomis discloses multiple embodiments where the GPS/outdoor
`
`technique can be performed either before the radio technique (Ex. 1008 at 19:52-
`
`60) or after the radio technique (id. at Abs.). (Petition at 32; see also Expert Decl.
`
`§ X.G.) Dr. Michalson further supports that “performing a satellite technique
`
`either before or after a terrestrial technique was a concept that was well known in
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
