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 techniques(s)” (and related terms),
`“location determining sources” (and related terms), and “output
`criteria” ................................................................................................... 8
`“location information” and related terms ............................................... 9
`B.
`C. Order of Claim Elements ...................................................................... 10
`D.
`“obtained via transmissions” and related terms ................................... 12
`IX. PRIOR ART ................................................................................................... 13
`A. State of the Art ...................................................................................... 13
`B. Kauser ................................................................................................... 14
`C. Wortham ............................................................................................... 15
`D. Obviousness based on Kauser and Wortham ....................................... 15
`
` 
`
` 
`
`i 
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`

`
`1. Overview ....................................................................................... 15
`2. Satellite / Non-Terrestrial GPS Technique ................................... 16
`2.
`Satellite / Non-Terrestrial GPS Technique ................................. ..l6
`3. Terrestrial Geometric Technique .................................................. 19
`3.
`Terrestrial Geometric Technique ................................................ ..l9
`4. Terrestrial Coverage Area Technique ........................................... 21
`4.
`Terrestrial Coverage Area Technique ......................................... ..2l
`5. Resulting Location Determination ................................................ 22
`5. Resulting Location Determination .............................................. ..22
`6. Output Resulting Location Information ........................................ 25
`6. Output Resulting Location Information ...................................... ..25
`7. Reasons to Modify and/or Combine ............................................. 25
`7. Reasons to Modify and/or Combine ........................................... ..25
`X. GROUNDS OF UNPATENTABILITY ........................................................ 30
`A. Claims 27 and 62 are obvious under 35 U.S.C. § 103 in view of Kauser
`A.
`Claims 27 and 62 are obvious under 35 U.S.C. § 103 in view of Kauser
` .............................................................................................................. 30
`............................................................................................................ ..3O
`CLAIM 27 ............................................................................................ 30
`CLAIM 62 ............................................................................................ 45
`B. Claim 39 is obvious under 35 U.S.C. § 103 in view of the Kauser-
`B.
`Claim 39 is obvious under 35 U.S.C. § 103 in view of the Kauser-
`Wortham combination .......................................................................... 57
`Wortham combination ........................................................................ ..57
`CLAIM 39 ............................................................................................ 58
`XI. CONCLUSION .............................................................................................. 60
`
`CLAIM 39 .......................................................................................... ..5 8
`
`XI.
`
`CONCLUSION ............................................................................................ ..6O
`
`
`
`
`
`
`
`ii
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` 
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`
`
`1. Overview ..................................................................................... ..l5
`
`X.
`
`GROUNDS OF UNPATENTABILITY ...................................................... ..3O
`
`CLAIM 27 .......................................................................................... ..3O
`
`CLAIM 62 .......................................................................................... ..45
`
`

`
`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 27, 39, and 62 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.,
`
`
`
`
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`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
`
`
`
`
`
`3
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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).
`
`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
`2
`(THIS PETITION)
`3
`
`PETITIONS FOR ’484 PATENT
`Challenged Claims
`Primary Prior Art Reference
`Kauser (Ex. 1007)
`64, 67
`
`27, 39, 62
`
`Kauser (Ex. 1007)
`
`1, 2, 6, 24, 25, 51, 71, 72
`
`Loomis (Ex. 1008)
`
`
`
`There is no redundancy of challenged claims as each petition 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 buried within
`
`400+ prior art references disclosed by the applicants 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
`
`
`
`
`
`5
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`

`
`Examiner).
`
`VI.
`
`IDENTIFICATION OF CHALLENGE
`
`Petitioners challenge the following claims of the ’484 Patent on the
`
`following grounds:
`
`Challenged Claims
`27, 62
`39
`
`Statutory Basis
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`Prior Art References
`Kauser
`Kauser and Wortham
`
`
`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.
`
`The ’484 Patent relates to a system and method for locating a mobile station
`
`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
`
`Abstract.) For example, certain claims require (1) using multiple location
`
`techniques to obtain location information for a mobile station, and (2) determining
`
`
`
`
`
`6
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`

`
`a resulting estimate using the location information from each technique. (Id. at
`
`36:31-45, 65:57-66:15.) In the primary embodiment, the location function obtains
`
`the resulting location estimate of the mobile station by either combining location
`
`estimates from each location technique or selecting a location estimate from one of
`
`the location techniques. (Id. at 171:49-54, 183:53-62). A more detailed
`
`description of the patented technology is provided in Dr. Michalson’s expert
`
`declaration. (Expert Decl. § VII.)
`
`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 and other related patents in the same family (e.g., the ’231 Patent)
`
`provide limited guidance as to the understanding and interpretation of the claims
`
`for the purposes of this proceeding.
`
`
`
`
`
`7
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`

`
`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 techniques(s)” (and related terms),
`“location determining sources” (and related terms), and “output
`criteria”
`The terms “mobile station,” “location technique(s)” (and/or variations
`
`thereof), “location determining sources” (and/or variations thereof), and “output
`
`criteria” are recited by certain challenged claims. The prior district court
`
`proceeding adopted the following constructions: (1) mobile station: “a mobile
`
`
`
`
`
`8
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`

`
`wireless device that is at least a transmitting device and may include a receiving
`
`device”; (2) mobile station location technique: “technique for determining mobile
`
`station locations”; (3) mobile station location determining sources: “source (such
`
`as a computer system, device, or component) for determining mobile station
`
`locations”; and (4) output criteria: “data specifying one or more required
`
`attributes of the output location data.” (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 information” and related terms
`The challenged claims recite the term “location information” and/or
`
`variations thereof, including: (1) “location information” (Claim 27, 62); and (2)
`
`“location related information” (Claim 62). The context of the “location
`
`information” terms in the challenged claims requires those terms to contain
`
`information that identifies or indicates a location. For example, Claim 27 requires
`
`“first obtaining . . . at least first location information of a first location of a first of
`
`said mobile stations. . . .” (Ex. 1002 (’484 Patent) at 175:13-18.)
`
`Thus, the requirement for the “location 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
`
`
`
`
`
`9
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`

`
`“location information” terms according to their plain and ordinary meaning under
`
`the broadest reasonable interpretation.
`
`C. Order of Claim Elements
`Certain challenged claims use numeric modifiers, such as “first” and
`
`“second,” to refer to various claim elements associated with the recited location
`
`techniques and/or location information provided from those techniques. The
`
`challenged claims simply use these modifiers to distinguish between different
`
`claim elements, and thus should not be construed as requiring any particular order.
`
`“The use of the terms ‘first’ and ‘second’ is a common patent-law convention to
`
`distinguish between repeated instances of an element or limitation” and “should
`
`not in and of itself impose a serial or temporal limitation.” 3M Innovative Props.
`
`Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003) (holding that
`
`the terms “first pattern,” “second pattern,” “first embossing step,” and “second
`
`embossing step” did not impose an order).
`
`For example, Claim 27 recites the steps of “first obtaining” and “second
`
`obtaining.” In these claims, the “first obtaining” step obtains first location
`
`information of a first location of a first of said mobile stations, and the “second
`
`obtaining” step obtains second location information of a second location of a
`
`second of said mobile stations. Thus, these steps involve obtaining location data
`
`for two different mobile stations, and therefore the “first” and “second” qualifiers
`
`
`
`
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`10
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`

`
`are simply used to distinguish between the two obtaining steps rather than
`
`requiring one mobile station to be located before the other. Unwired Planet, LLC
`
`v. Google Inc., No. 3:12-CV-00504-MMD, 2014 WL 7012497, at *27 (D. Nev.
`
`Dec. 12, 2014) (holding that the steps of “first transmitting” and “second
`
`transmitting” are merely “two separate transmission steps” and do not require a
`
`sequential order).
`
`In the prior litigation, Patent Owner argued that, for certain claims (but not
`
`those challenged in this Petition), these numeric modifiers imposed an order on the
`
`location techniques. That argument, however, was simply a last resort attempt to
`
`distinguish the prior art, raised for the first time in Patent Owner’s expert reports
`
`(rather than during claim construction). Patent Owner’s interpretation is
`
`unsupported (and contradicted) by the specification, and is also inconsistent with a
`
`ruling from the prior district court, which determined that both “obtaining” steps of
`
`analogous Claim 25 of the ’231 Patent are not always required. (Ex. 1018
`
`(Supplemental Claim Construction).)
`
`The specification explicitly confirms that the location techniques are not
`
`performed in any particular order. For example, the “Field of the Invention” states
`
`that “[t]he present invention is directed … to a system and method for locating a
`
`wireless mobile station using a plurality of simultaneously activated mobile station
`
`location estimators.” (Ex. 1002 (’484 Patent) at 1:14-20 (emphasis added); see
`
`
`
`
`
`11
`
`

`
`also id. at 53:7-11.) Location techniques that are “simultaneously activated” are
`
`performed at the same time: they do not have an order. Patent Owner will surely
`
`argue
`
`that not all embodiments require
`
`the
`
`techniques
`
`to be activated
`
`simultaneously. Even if the techniques can be performed serially, however, it is
`
`clear from the specification that no particular order is required, because the outputs
`
`from all location techniques are “synergistically used for deriving therefrom an
`
`enhanced location estimate of the mobile station.” (Ex. 1002 (’484 Patent) at 12:7-
`
`16, 68:2-8 (emphasis added); see also id. at 9:5-11, 66:9-14, 87:44-58.)
`
`Thus, under the broadest reasonable interpretation of these claims in view of
`
`the specification, the numeric modifiers do not require any particular order for the
`
`associated claim elements.
`
`D.
` “obtained via transmissions” and related terms
`Claim 27 recites “using wireless signal measurements obtained via
`
`transmissions between said mobile stations and a plurality of fixed location
`
`terrestrial communication stations.” (See Claim Element 27.0 in Section X.A.)
`
`Similarly, Claim 62 states “using wireless signal measurements obtained from
`
`transmissions between said mobile stations and a plurality of terrestrial
`
`communication stations.” (See Claim Element 62.0 in Section X.A.)
`
`The phrase obtained via/from transmissions used in Claims 27 and 62 could
`
`be interpreted to cover two possible scenarios: (1) the wireless signal data itself is
`
`
`
`
`
`12
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`

`
`transmitted between the communication stations and the mobile station (e.g., GPS
`
`satellite signal measurements are transmitted from the mobile station to the
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`communication stations), or (2) the wireless signal data is simply generated using
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`the transmissions between the communication stations and mobile station (e.g., the
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`mobile station measures the signals transmitted from communication stations).
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`In the prior district court proceeding, Patent Owner argued that both of the
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`above scenarios were covered by a substantially similar phrase in a different claim:
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`“wireless signal measurements obtained by transmissions between said mobile
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`station M and the communication stations.” (Ex. 1017 (Claim Construction) at 27-
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`28.) The district court agreed with the Patent Owner and ruled that both of the
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`above scenarios were covered by this language. (Id.) For purposes of this
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`proceeding, Petitioners agree that the broadest reasonable interpretation of the
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`substantially similar language in Claims 27 and 62 also covers both of the above
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`scenarios.
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`IX. PRIOR ART
`A.
`State of the Art
`As acknowledged by the ’484 Patent, various location determining
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`technologies were widely known and implemented by those of ordinary skill in the
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`art at the time of the alleged invention of the ’484 Patent. (See, e.g., Ex. 1002
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`(’484 Patent) at 1:43-2:29.) Examples of preexisting location determining
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`technologies include GPS, GLONASS, Loran-C, Omega, and various other
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`ground-based positioning technologies, such as signal strength, time-of-arrival, and
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`time-difference-of-arrival techniques. (See, e.g., Ex. 1009 (Wortham) at 2:63-3:5;
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`Ex. 1007 (Kauser) at 1:61-2:40, 2:62-66; Ex. 1011 (Stilp) at Abs., 5:5-26, 6:41-55,
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`14:31-39; Ex. 1012 (FAA-20-101C) at 1.)
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`Hybrid location systems that used multiple location techniques were also
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`widely known and understood by those of ordinary skill in the art at the time of the
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`alleged invention. (See, e.g., Ex. 1008 (Loomis) at Abs.; Ex. 1007 (Kauser) at
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`2:62-66; Ex. 1010 (Schuchman) at 1:1-12, 5:22-33, 7:19-26.)
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`A more detailed description of the state of the art is provided in Dr.
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`Michalson’s expert declaration. (Expert Decl. § VII.)
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`B. Kauser
`U.S. Patent No. 5,724,660 to Kauser et al. (“Kauser”) (Ex. 1007) was filed
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`February 20, 1996, and issued March 3, 1998 (“Kauser”). Kauser is entitled to a
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`priority date at least as early as its filing date of February 20, 1996, and qualifies as
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`prior art under 35 U.S.C. § 102(e). 2
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`Kauser is described below in Section IX.D, and also in Dr. Michalson’s
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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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`expert declaration (Expert Decl. § VII.C).
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`C. Wortham
`U.S. Patent No. 6,748,226 to Wortham (“Wortham”) (Ex. 1009), issued June
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`8, 2004 (“Wortham”). Wortham claims priority to an application filed November
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`16, 1994, and thus qualifies as prior art under 35 U.S.C. § 102(e).
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`Wortham is described below in Section IX.D, and also in Dr. Michalson’s
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`expert declaration (Expert Decl. § VII.C).
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`D. Obviousness based on Kauser and Wortham
`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 either alone or in combination
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`with Wortham (depending on the particular invalidity grounds). This section
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`describes relevant features disclosed by these prior art references and explains how
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`these references could be combined and/or modified to invalidate the challenged
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`claims.
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`For example, Kauser’s mobile telephone location system includes a method
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`and apparatus for determining and outputting a resulting location estimate (and
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`associated confidence value) for a mobile telephone using multiple location
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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, 9:19-29, 11:35-12:21.) The
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`location techniques in Kauser’s location system include satellite-based techniques
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`(i.e., GPS) and terrestrial-based techniques (i.e., cell-site geometric and coverage
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`area techniques). (Id.) As described throughout this section, a person of ordinary
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`skill in the art would have been motivated to modify and/or combine Kauser’s
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`mobile telephone location system with aspects of the positioning systems disclosed
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`in Wortham. Section IX.D.7 presents reasons why these prior art combinations
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`and/or modifications would have been obvious to those of ordinary skill in the art.
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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.) In Kauser’s
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`location system, the GPS satellite signal measurements used by Kauser’s GPS
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`technique satisfy the claim elements that require satellite signal time delay
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`measurements. For example, Kauser discloses that the mobile telephone includes
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`“a GPS receiver/processor [that] receives signals from satellites orbiting the earth
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`and translates these signals into latitude and longitude coordinates of the position
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`of the GPS receiver/processor.” (Ex. 1007 (Kauser) at 9:19-29; see also id. at
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`Abs., 2:62-3:15, 12:56-13:8.)
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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 provides the current latitude/longitude coordinates, the
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`most recently stored reliable coordinates, and peak error values/thresholds. (Id.)
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`Satellite measurements obtained by terrestrial transmissions:
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`In Kauser’s location system, the mobile telephone performs the GPS
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`calculations using the GPS satellite signal measurements, and then it simply sends
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`the computed GPS information (e.g., the GPS coordinates) to the cellular network.
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`(Ex. 1007 (Kauser) at 9:34-39, 11:26-34.)
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`As explained by Dr. Michalson, however, in another well-known GPS
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`embodiment, a mobile telephone can send the GPS measurements t