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.
`
`__________________
`
`
`
`U.S. Patent No. 7,525,484
`
`Title: GATEWAY AND HYBRID SOLUTIONS FOR WIRELESS LOCATION
`
`__________________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 1
`A. Real Party-In-Interest ............................................................................. 1
`B. Related Matters ....................................................................................... 2
`C. Counsel and Service Information ........................................................... 2
`III. PAYMENT OF FEES ..................................................................................... 3
`IV. GROUNDS FOR STANDING ........................................................................ 3
`A. Petitioners have standing to bring this Petition ...................................... 3
`B. Petitioners are not barred by the prior litigation ..................................... 4
`V. NON-REDUNDANCY OF CONCURRENT PETITIONS............................ 5
`VI.
`IDENTIFICATION OF CHALLENGE .......................................................... 6
`VII. THE ’484 PATENT ......................................................................................... 6
`A. Overview ................................................................................................. 6
`B. Prosecution History ................................................................................ 7
`C. Level of ordinary skill in the art ............................................................. 8
`VIII. CLAIM CONSTRUCTION ............................................................................ 8
`A.
`“mobile station,” “location estimating sources” (and related terms), and
`“geographical extent” ............................................................................. 8
`“location related information” and related terms ................................... 9
`B.
`“gating module” and “communications controller” ............................. 10
`C.
`IX. PRIOR ART ................................................................................................... 12
`A. State of the Art ...................................................................................... 12
`B. Kauser ................................................................................................... 13
`C. Obviousness in view of Kauser ............................................................ 15
`1. Overview ....................................................................................... 15
`2. Satellite / Non-Terrestrial GPS Technique ................................... 15
`3. Terrestrial Geometric Technique .................................................. 16
`
` 
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` 
`
`i 
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`

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`4. Terrestrial Coverage Area Technique ........................................... 19
`4.
`Terrestrial Coverage Area Technique ......................................... ..l9
`5. Resulting Location Determination ................................................ 19
`5. Resulting Location Determination .............................................. .. 19
`6. Output Resulting Location Information ........................................ 22
`6. Output Resulting Location Information ...................................... ..22
`X. GROUNDS OF UNPATENTABILITY ........................................................ 23
`A. Claims 64 and 67 are obvious under 35 U.S.C. § 103 in view of Kauser
`A.
`Claims 64 and 67 are obvious under 35 U.S.C. § 103 in View of Kauser
` .............................................................................................................. 23
`............................................................................................................ ..23
`CLAIM 64 ............................................................................................ 23
`CLAIM 67 ............................................................................................ 37
`XI. CONCLUSION .............................................................................................. 52
`
`XI.
`
`CONCLUSION ............................................................................................ ..52
`
`
`
`
`
`
`
`ii
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` 
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`
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`GROUNDS OF UNPATENTABILITY ...................................................... ..23
`
`CLAIM 64 .......................................................................................... ..23
`
`CLAIM 67 .......................................................................................... ..37
`
`

`
`Number
`
`EXHIBITS1
`
`
`Description
`
`1001
`
`U.S. Patent No. 7,764,231 (the “’231 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`U.S. Patent No. 7,525,484 (the “’484 Patent”)
`(PATENT CHALLENGED IN THIS PETITION)
`
`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
`
`1011
`
`U.S. Patent No. 5,327,144 to Stilp (“Stilp”)
`
`1012
`
`1013
`
`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)
`
`FAA Advisory Circular 20-130A, Airworthiness Approval of
`Navigation or Flight Management Systems Integrating Multiple
`Navigation Sensors (Jun. 14, 1995)
`
`                                                       
`1 For the Board’s convenience, the same set of exhibits and exhibit numbering are
`
`provided for each of Petitioner’s concurrently filed petitions for the ’484 Patent.
`
`
`
`
`
`iii
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`

`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`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 Survey”)
`
`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)
`
`
`
`
`
`iv
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`

`
`I.
`
`INTRODUCTION
`
`Petitioners T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication
`
`Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson (collectively
`
`“Petitioners”) respectfully request inter partes review of Claims 64 and 67 of U.S.
`
`Patent No. 7,525,484 (the “’484 Patent,” attached as Ex. 1002) in accordance with
`
`35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq. The expert declaration of
`
`Dr. William Michalson (attached as Ex. 1006) is provided in support of this
`
`Petition and is cited throughout as “Expert Decl.”
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`The real parties-in-interest are Petitioners T-Mobile US, Inc. and T-Mobile
`
`USA, Inc. (collectively “T-Mobile”), Petitioner TeleCommunication Systems, Inc.
`
`(“TCS”), and Petitioners Ericsson Inc. and Telefonaktiebolaget LM Ericsson
`
`(collectively, “Ericsson”).
`
`For disclosure purposes, the following entities own more than 10% of the
`
`publicly traded shares (either directly or indirectly) of Petitioner T-Mobile:
`
`Deutsche Telekom AG, T-Mobile Global Holding GmbH, T-Mobile Global
`
`Zwischenholding GmbH, and Deutsche Telekom Holding B.V.
`
`Finally, Petitioner T-Mobile acquired MetroPCS Wireless, Inc. and
`
`MetroPCS Communications, Inc. (collectively “MetroPCS”) in April 2013, and
`
`thus the MetroPCS entities no longer exist. (Ex. 1023 (MetroPCS Corporate
`
`
`
`
`
`1
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`

`
`Disclosure Statement).)
`
`B. Related Matters
`The ’484 Patent is or was involved in the following lawsuits: (1) TracBeam,
`
`LLC v. T-Mobile US, Inc., No. 6:14-cv-00678 (E.D. Tex.); (2) TracBeam, LLC v.
`
`Apple Inc., No. 6:14-cv-00680 (E.D. Tex.); (3) TracBeam, LLC. v. Google, Inc.,
`
`No. 6:13-cv-00093 (E.D. Tex.); (4) TeleComm. Sys., Inc. v. TracBeam, LLC, Nos.
`
`6:12-cv-00058 (E.D. Tex.), 1:11-cv-02519 (D. Colo.); and (5) TracBeam, LLC v.
`
`MetroPCS Commc’ns, Inc. et al., No. 6:11-cv-00096 (E.D. Tex.).
`
`Patent Owner TracBeam is currently asserting the ’484 Patent and three
`
`other related patents (attached as Exs. 1001 – 1004) against Petitioner T-Mobile in
`
`the first lawsuit identified above. In addition to the present Petition for the ’484
`
`Patent, Petitioner is concurrently filing additional inter partes review petitions for
`
`the ’484 Patent (see Section II.B) and for the three other asserted patents (U.S.
`
`Patent Nos. 7,298,327; 7,764,231; and 8,032,153).
`
`C. Counsel and Service Information
`Lead Counsel is Brian W. Oaks (Reg. No. 44,981) of Baker Botts LLP;
`
`Back-up Counsel is Douglas M. Kubehl (Reg. No. 41,915), Chad C. Walters (Reg.
`
`No. 48,022), and Ross G. Culpepper (Reg. No. 69,339) of Baker Botts LLP. A
`
`Power of Attorney is filed concurrently herewith under 37 C.F.R. § 42.10(b).
`
`Service information is as follows: Baker Botts LLP, 98 San Jacinto Blvd.,
`
`
`
`
`
`2
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`

`
`Suite 1500, Austin, TX 78701; Phone: (512) 322-5470; Fax: (512) 322-3621.
`
`Petitioners consent to service by electronic mail at brian.oaks@bakerbotts.com,
`
`doug.kubehl@bakerbotts.com,
`
`chad.walters@bakerbotts.com,
`
`and
`
`ross.culpepper@bakerbotts.com.
`
`III. PAYMENT OF FEES
`The undersigned authorizes the Office to charge the fee required by 37
`
`C.F.R. § 42.15(a) for this Petition to Deposit Account No. 02-0384, as well as any
`
`additional fees that might be due in connection with this Petition.
`
`IV. GROUNDS FOR STANDING
`A.
`Petitioners have standing to bring this Petition
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the ’484
`
`Patent is available for inter partes review and that the Petitioners are not barred or
`
`estopped from requesting inter partes review of the challenged claims of the ’484
`
`Patent.
`
`Petitioner T-Mobile has not filed a civil action challenging the validity of
`
`any claims of the ’484 Patent, and the complaint served on T-Mobile in the
`
`litigation referenced above in Section II.B was served within the last 12 months.
`
`Petitioner Ericsson has not filed a civil action challenging the validity of any
`
`claims of the ’484 Patent, nor has it been served with a complaint for infringement
`
`of the ’484 Patent.
`
`Further, as explained below, Petitioners are not barred based on the prior
`
`
`
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`3
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`

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`TracBeam lawsuits involving MetroPCS and TCS (see Section II.B (Related
`
`Matters)) because those lawsuits were dismissed without prejudice.
`
`Petitioners are not barred by the prior litigation
`
`B.
`Petitioner T-Mobile (which acquired MetroPCS in 2013) is not barred by
`
`Patent Owner TracBeam’s prior litigation against MetroPCS, and Petitioner TCS is
`
`not barred by its prior litigation with Patent Owner TracBeam. (See Section II.B
`
`(Related Matters).) Those lawsuits were dismissed without prejudice, and thus are
`
`treated as if they had never been filed.
`
`Specifically, on February 25, 2011, TracBeam filed a civil action against
`
`MetroPCS alleging infringement of the ’484 Patent. (Ex. 1019 (Complaint against
`
`MetroPCS).) On September 27, 2011, TCS filed a declaratory judgment action
`
`against TracBeam with respect to the ’484 Patent (in response to TracBeam’s
`
`lawsuit against TCS’s customers, including MetroPCS). (Ex. 1020 (Complaint
`
`filed by TCS).) The TCS lawsuit and the MetroPCS lawsuit were eventually
`
`consolidated. On June 17, 2013, both the MetroPCS and TCS lawsuits were
`
`dismissed without prejudice after the parties filed an agreed dismissal request. (Ex.
`
`1021 (Dismissal Request); Ex. 1022 (Dismissal Order).) The Board has held that a
`
`civil action—including a declaratory
`
`judgment action—dismissed without
`
`prejudice does not bar a petition for inter partes review (“IPR”), as such dismissals
`
`are treated as if the lawsuit had never been brought. “[A] prior action that is
`
`
`
`
`
`4
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`

`
`voluntarily dismissed without prejudice does not give rise to 35 U.S.C. §§ 315
`
`(a)(1) or (b) statutory bars.” Microsoft Corp. v. Parallel Networks Licensing LLC,
`
`IPR2015-00486, Paper 10 at 14 (PTAB Jul. 15, 2015); see also Macauto U.S.A. v.
`
`BOS GmbH & KG, IPR2012-00004, Paper 18 at 14-16 (PTAB Jan. 24, 2013)
`
`(petitioner not barred by patent infringement complaint that was dismissed without
`
`prejudice); see also Nautique Boat Co. v. Malibu Boats, LLC, Case IPR2014-
`
`01045, Paper 13 at 9-11 (PTAB Nov. 26, 2014) (petitioner not barred by
`
`declaratory judgment action that was dismissed without prejudice).
`
`Thus, Petitioners cannot be barred from bringing this Petition based on the
`
`prior litigation.
`
`V. NON-REDUNDANCY OF CONCURRENT PETITIONS
`Due to the many lengthy asserted claims, and page limits for IPR petitions,
`
`Petitioners are concurrently filing the following petitions for the ’484 Patent:
`
`Petition #
`1
`(THIS PETITION)
`2
`3
`
`PETITIONS FOR ’484 PATENT
`Challenged Claims
`Primary Prior Art Reference
`
`64, 67
`
`27, 39, 62
`1, 2, 6, 24, 25, 51, 71, 72
`
`Kauser (Ex. 1007)
`
`Kauser (Ex. 1007)
`Loomis (Ex. 1008)
`
`
`
`There is no redundancy of challenged claims as each of the petitions
`
`addresses separate and distinct claims. While certain prior art relied on in this
`
`Petition was disclosed to the Patent Office during prosecution, that prior art was
`
`
`
`
`
`5
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`

`
`buried within the 400+ prior art references disclosed by the applicant during
`
`prosecution and was never addressed substantively by the Examiner. See, e.g.,
`
`Microsoft Corp. v. Parallel Networks Licensing LLC, IPR2015-00486, Paper 10 at
`
`15 (PTAB Jul. 15, 2015) (declining to exercise discretion to deny petition under 35
`
`U.S.C. § 325(d) for prior art disclosed during prosecution but never applied to the
`
`claims by the Examiner).
`
`VI.
`
`IDENTIFICATION OF CHALLENGE
`
`Petitioners challenge the following claims of the ’484 Patent on the
`
`following grounds:
`
`Challenged Claims
`64, 67
`
`Statutory Basis
`35 U.S.C. § 103
`
`Prior Art References
`Kauser
`
`
`Section VIII identifies how the challenged claims are to be construed. Section X
`
`identifies (1) the specific statutory grounds on which the challenge to each claim is
`
`based and how each challenged claim is unpatentable for each ground, and (2) the
`
`exhibit numbers of the supporting evidence and the relevance of that evidence.
`
`VII. THE ’484 PATENT
`A. Overview
`The ’484 Patent was filed on January 26, 2001 as a continuation of U.S.
`
`Patent No. 7,764,231 (the ’231 Patent) and claims priority to various provisional
`
`applications, the earliest of which was filed September 9, 1996.
`
`
`
`
`
`6
`
`

`
`The ’484 Patent relates to a system and method for locating mobile stations
`
`using a combination of wireless location techniques, including satellite (e.g., GPS)
`
`and terrestrial (e.g., cell-tower triangulation) techniques. (Ex. 1002 (’484 Patent)
`
`at Abs.) For example, certain claims require (1) using multiple location techniques
`
`to obtain location information for a mobile station, and (2) determining a resulting
`
`estimate using the location information from each technique. (See, e.g., Ex. 1002
`
`(’484 Patent) at 171:16-56.)
`
`A more detailed description of the patented technology is provided in Dr.
`
`Michalson’s expert declaration. (Expert Decl. § VII.C.)
`
`Prosecution History
`
`B.
`No substantive prior art rejections were issued by the USPTO during the
`
`prosecution of the ’484 Patent. Instead, in an Ex parte Quayle Action mailed on
`
`August 14, 2002, the USPTO allowed all of the claims, pending correction of
`
`minor errors. Nonetheless, prosecution of the ’484 Patent lasted an additional 6.5
`
`years due to the strategic filing of numerous RCEs, IDSs, and repetitive
`
`claim/specification amendments. This same pattern of delay was seen during
`
`prosecution of Patent Owner’s other related patents, including in the 12-year
`
`prosecution of the parent ’231 Patent (which is discussed in Petitioners’ inter
`
`partes review petitions for the ’231 Patent). Accordingly, the prosecution histories
`
`of the ’484 Patent and other related patents in the same family (e.g., the ’231
`
`
`
`
`
`7
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`

`
`Patent) provide limited guidance as to the understanding and interpretation of the
`
`claims for the purposes of this proceeding.
`
`C. Level of ordinary skill in the art
`A person of ordinary skill in the art in the field of the ’484 Patent would
`
`typically have (1) a degree in electrical engineering, computer engineering,
`
`computer science, or a related field, and (2) one to four years of experience and/or
`
`postgraduate study relating to wireless communication systems and/or wireless
`
`location and navigation technologies. (Expert Decl. § V.) However, someone with
`
`less technical education but more practical experience, or vice versa, could also
`
`meet that standard. (Id.)
`
`VIII. CLAIM CONSTRUCTION
`Some of the challenged claims were construed in connection with a prior
`
`lawsuit filed by Patent Owner TracBeam, using the applicable claim construction
`
`standards for district court proceedings. (Ex. 1017 (Claim Construction Order).)
`
`The following claim construction analysis in this Petition, however, is based on the
`
`broadest reasonable interpretation of the claims in light of the specification. See 37
`
`C.F.R. § 42.100(b).
`
`A.
`
` “mobile station,” “location estimating sources” (and related
`terms), and “geographical extent”
`The terms “mobile station,” “location estimating sources” (and/or variations
`
`therefor), and “geographical extent” are recited by certain challenged claims. The
`
`
`
`
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`8
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`

`
`prior district court proceeding adopted the following constructions: (1) mobile
`
`station: “a mobile wireless device that is at least a transmitting device and may
`
`include a receiving device”; (2) mobile station location estimating sources:
`
`“source (such as a computer system, device, or component) for estimating mobile
`
`station locations”; and (3) geographical extent: “geographical area or range.”
`
`(Ex. 1017 (Claim Construction) at 37-38.) Petitioners do not believe that these
`
`terms require construction in this inter partes review proceeding, but nonetheless
`
`Petitioners do not otherwise object to the prior district court constructions for
`
`purposes of this proceeding.
`
`B.
` “location related information” and related terms
`Certain challenged claims recite the term “location related information”
`
`(Claim 67). The context of the challenged claims requires the “location related
`
`information” terms to contain information that identifies or indicates a location (as
`
`opposed to, for example, solely containing an error or failure message). For
`
`example, Claim 67 states that “mobile station location estimating sources” receive
`
`“location related
`
`information” and “each such source supplied with
`
`its
`
`corresponding data, outputs a corresponding location estimate of a geographical
`
`location. . . .” (Ex. 1002 (’484 Patent) at 184:28-42.) Similar requirements are
`
`found in the other challenged claims.
`
`In the prior district court proceeding, the court corroborated the above
`
`
`
`
`
`9
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`

`
`interpretation, concluding that although no express construction was necessary for
`
`the “location related information” terms, nevertheless “the concept of identifying a
`
`location is found in other clauses in the claims.” (Ex. 1017 (Claim Construction)
`
`at 14, 37.)
`
`Petitioners agree that the requirement for the “location related information”
`
`terms to identify or indicate a location can be found in the surrounding claim
`
`language. Consequently, for purposes of this proceeding Petitioners do not object
`
`to interpreting the “location related information” terms according to their plain and
`
`ordinary meaning under the broadest reasonable interpretation standard.
`
`C.
` “gating module” and “communications controller”
`The term “gating module” is recited by challenged Claim 64. For example,
`
`Claim 64 recites “a gating module for communicating with two or more mobile
`
`station location estimating sources . . . wherein said gating module communicates
`
`on a communications network . . . for providing said location system with said
`
`corresponding geographic extent for a location L of the mobile station M.” (Ex.
`
`1002 (’484 Patent) at 183:18-52.) The term “communications controller” is recited
`
`by challenged Claim 67. Analogous to “gating module,” Claim 67 recites “a
`
`“communications controller for selectively communicating with a plurality of
`
`mobile station location estimating sources. . . .” (Id. at 184:22-25.)
`
`The ’484 Patent describes “control and output gating modules which
`
`
`
`
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`10
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`

`
`includes the location center control subsystem 1250, and the output gateway
`
`1356.” (Id. at 61:25-32.) These modules and subsystems facilitate the process of
`
`locating mobile stations. For instance, the location control subsystem may “control
`
`and monitor location estimating processing for each target [mobile station]” and/or
`
`“route[] target [mobile station] location estimates to the appropriate location
`
`application(s).” (Id. at 61:33-35, 61:61-65). The ’484 Patent also describes “a
`
`wireless location gateway” as a “communications network node.” (Id. at 10:38-
`
`57.) The only mention of a “communications controller” in the ’484 Patent is
`
`where that term is introduced in Claim 67.
`
`Claims 64 and 67 use the terms “gating module” and “communications
`
`controller” in an almost identical manner. Thus, both terms should be construed
`
`the same. Patent Owner may argue for a construction of “gating module” and
`
`“communications controller” that requires those components to “activate” the
`
`“location estimating sources.” That construction, however, would be overly
`
`narrow. For example, Claim 67 requires the “communications controller” to be
`
`used “for at least one of . . . (1) activating a selected one or more of said mobile
`
`station
`
`location estimating sources, and
`
`(2) receiving
`
`location related
`
`information.” Thus, while “activating” the “location estimating sources” is one
`
`possible function of the “communications controller,” it is not required.
`
`Thus, the broadest reasonable interpretation of the “gating module” recited
`
`
`
`
`
`11
`
`

`
`in Claim 64 and “communications controller” recited in Claim 67 is “a network
`
`node that controls or facilitates the process of locating mobile stations.”
`
`IX. PRIOR ART
`A.
`State of the Art
`As acknowledged by the ’484 Patent, various location determining
`
`technologies were widely known and implemented by those of skill in the art at the
`
`time of the alleged invention of the ’484 Patent. (See, e.g., Ex. 1002 (’484 Patent)
`
`at 1:43-2:29.) Examples of preexisting location determining technologies include
`
`GPS, GLONASS, Loran-C, Omega, and various other ground-based positioning
`
`technologies, such as signal strength, time-of-arrival, and time-difference-of-
`
`arrival techniques. (See, e.g., Ex. 1009 (Wortham) at 2:63-3:5; Ex. 1007 (Kauser)
`
`at 1:61-2:40, 2:62-66; Ex. 1011 (Stilp) at Abs., 5:5-26, 6:41-55, 14:31-39; Ex.
`
`1012 (FAA Advisory Circular 20-101C) at 1.)
`
`Hybrid location systems that used multiple location techniques were also
`
`widely known and understood by those of skill in the art at the time of the alleged
`
`invention. (See, e.g., Ex. 1008 (Loomis) at Abs.; Ex. 1007 (Kauser) at 2:62-66;
`
`Ex. 1010 (Schuchman) at 1:1-12, 5:22-33, 7:19-26.) In fact, the FAA began
`
`experimenting with a hybrid solution in its flight management systems in the 1980s
`
`and early 1990s. (Ex. 1012 (FAA Advisory Circular 20-101C) at 1, 3; Ex. 1013
`
`(FAA Advisory Circular 20-130A) at 1.) Similarly, the automotive industry began
`
`
`
`
`
`12
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`

`
`incorporating hybrid solutions in vehicle navigation and fleet management systems
`
`in the early 1990s. (See, e.g., Ex. 1010 (Schuchman) at 1:1-2:23.) As the use of
`
`cellular technology increased, systems were also developed that used existing
`
`cellular telephone infrastructure to provide wireless location capabilities. (See,
`
`e.g., Ex. 1009 (Wortham) at 1:46-2:12; Ex. 1007 (Kauser) at 2:62-66; Ex. 1011
`
`(Stilp) at Abs., 5:5-26.) Various hybrid location technologies were also utilized in
`
`these cellular systems. (See, e.g., Ex. 1007 (Kauser) at 2:62-66; Ex. 1010
`
`(Schuchman) at 1:1-12, 5:22-33, 7:19-26; Ex. 1016 (Driscoll Survey) at stamped
`
`pp. 9, 38-39.)
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`Kauser
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`B.
`U.S. Patent No. 5,724,660 to Kauser et al. (Ex. 1007), titled “Method and
`
`Apparatus for Locating a Mobile Station by Comparing Calculated Location Area
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`with GPS Coordinates,” was filed February 20, 1996 and issued March 3, 1998
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`(“Kauser”). Kauser is entitled to a priority date at least as early as its filing date of
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`February 20, 1996,2 and qualifies as prior art under 35 U.S.C. § 102(e).
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`Kauser discloses a method and apparatus for determining and outputting a
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`resulting location estimate for a mobile telephone using multiple location
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`2 Petitioners believe that the invention described in Kauser was actually invented in
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`1995 and thus qualifies as prior art as of that date under 102(g)(2). Petitioners,
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`however, cannot rely on 102(g) prior art in an IPR proceeding.
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`techniques that generate location estimates using wireless signal measurements.
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`(Ex. 1007 (Kauser) at Abs., 2:62-3:15, 6:12-34, 11:35-12:21.) The location
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`techniques include satellite-based techniques (e.g., GPS) and terrestrial-based
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`techniques (e.g., cell-site geometric and coverage area techniques). (Id.) Kauser’s
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`location function can be initiated for a variety of services, including emergency
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`response services, fleet management, navigation for mobile station users who are
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`lost, etc. (Id. at 1:46-60, 5:33-67, 12:22-35.)
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`Kauser’s location functionality can be implemented by a mobile location
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`module (MLM), which is a component with a processor and memory that is
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`connected to the mobile telephone system via a mobile switching center (MSC).
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`(Id. at 5:23-32.) The MLM can determine the specific geographic location of a
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`mobile station using the techniques identified above (e.g., GPS, a cell-site
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`geometric technique, and a cell-site coverage area technique). (Id. at 5:23-32, 6:1-
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`23, 11:35-12:21.) For example, Kauser discloses an embodiment whereby the
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`MLM obtains location estimates for the mobile station from each location
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`technique. (Id. at 6:1-23, 11:35-12:21.) The MLM then determines a resulting
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`location estimate using the respective estimates from the various techniques (i.e.,
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`the satellite-based technique and the terrestrial-based technique). (Id. at 11:35-
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`12:21.) The resulting location estimate (and associated confidence value) is then
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`routed to the appropriate end user destination. (Id. at 12:22-35.)
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`C. Obviousness in view of Kauser
`1. Overview
`The grounds of invalidity presented in Section X demonstrate that the
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`challenged claims are obvious in view of Kauser. This section describes relevant
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`features disclosed by Kauser and how those features invalidate the challenged
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`claims.
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`Satellite / Non-Terrestrial GPS Technique
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`2.
`This section addresses claim elements relating to a satellite or non-terrestrial
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`location technique.
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`Satellite (non-terrestrial) technique:
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`Kauser’s location system includes a GPS technique, which satisfies the
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`claim elements that require a satellite or non-terrestrial location technique. (Ex.
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`1007 (Kauser) at 9:19-29; see also id. at Abs., 2:62-3:15, 12:56-13:8.)
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`Satellite signal time delay measurements:
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`Kauser discloses
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`that
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`the mobile
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`telephone
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`includes “a GPS
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`receiver/processor [that] receives signals from satellites orbiting the earth and
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`translates these signals into latitude and longitude coordinates of the position of
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`the GPS receiver/processor.” (Ex. 1007 (Kauser) at 9:19-29; see also id. at Abs.,
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`2:62-3:15, 12:56-13:8.) As explained by Dr. Michalson and acknowledged by the
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`’484 Patent, one of ordinary skill in the art would understand that these GPS
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`signals are “translated” into latitude and longitude coordinates by measuring the
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`signal travel time delay of the received GPS signals. (Expert Decl. § IX.B; Ex.
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`1002 (’484 Patent) at 1:54-2:2.)
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`Satellite location information:
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`In Kauser’s location system, the GPS location information generated by the
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`GPS technique satisfies the claim elements that require “location information”
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`(and variations thereof) obtained from a satellite technique. (Ex. 1007 (Kauser) at
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`11:26-34, 9:34-39, 10:66-11:25; see also id. at Abs., 9:40-11:25.) For example,
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`Kauser’s GPS technique (when supplied with GPS signal measurements) provides
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`the following GPS location information: (1) the current latitude/longitude GPS
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`coordinates of the mobile telephone (i.e., Lat(tn) and Long(tn)); (2) the most
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`recently stored reliable GPS coordinates (i.e., Lat_reg and Long_reg); (3) peak
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`error values (i.e., Error_Lat(tn) and Error_Long(tn)); and/or (4) error thresholds
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`(i.e., Err_Thresh_Lat and Err_Thresh_Long). (Id.)
`
`Terrestrial Geometric Technique
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`3.
`This section addresses claim elements relating to terrestrial location
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`techniques.
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`Terrestrial communication stations at fixed locations:
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`
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`Kauser’s mobile telephone location system includes a network of cell sites
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`used to communicate with mobile telephones. (Ex. 1007 (Kauser) at 1:20-32,
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`3:53-62, FIGS. 1, 2.) The cell sites in Kauser satisfy the claim elements that
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`require terrestrial communication stations at fixed locations that communicate with
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`mobile stations.
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`Specifically, Kauser discloses that a “cell site is the location within a cell
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`which contains the required hardware (e.g. antenna(s) and radio base station) to
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`communicate with the mobile telephones.” (Id. at 1:20-32; see also id. at 3:53-62,
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`FIGS. 1, 2.) Kauser explains “the locations (in latitude and longitude coordinates)
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`of the cell site antennas are known.” (Id. at 8:25-28, 9:8-15.) Thus, each cell site
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`in Kauser (i.e., a radio base station and associated antenna) is a fixed or stationary
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`radio transmission structure with a known location on the Earth. (Id. at 1:20-32,
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`3:53-62, 8:25-28, 9:8-15, FIGS. 1, 2.) As would be understood by those of
`
`ordinary skill in the art, these cell site structures are an inherent aspect of any
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`cellular communication network. (Expert Decl. § VII.C.)
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`Terrestrial location technique:
`
`Kauser’s location system includes a “geometric location technique,” which
`
`satisfies the claim elements that require a terrestrial location technique used to
`
`determine/obtain “location information” (or some variation of that term). (Ex.
`
`1007 (Kauser) at 2:62-66.) As explained in the following paragraphs, Kauser’s
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`geometric location technique calculates location estimates using measurements of
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`wireless signals transmitted between a mobile telephone and the surrounding cell
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`sites. (Id. at 2:62-3:10, 1:61-2:2; see also id. at Abs., 6:1-39.)
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`17
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`Wireless signal measurements:
`
`The cell site signal measurements used by Kauser’s geometric technique
`
`satisfy the claim elements that require the terrestrial technique to use wireless
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`signal measurements obtained from transmissions with the terrestrial stations.
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`Specifically, Kauser’s geometric technique calculates the location of a mobile
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`telephone using signal strength measurements from the transmissions between the
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`cell sites and the mobile telephone:
`
`In accordance with one embodiment of the invention, the location of a
`mobile telephone is determined using a geometric location technique.
`. . . A mobile location module within the mobile telephone system
`receives data representing the signal strengths of the signals
`surrounding
`the mobile
`telephone, which signals are being
`transmitted from cell site antennas of the m