UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`GOOGLE INC. and LG ELECTRONICS, INC.,
`Petitioner,
`v.
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`____________
`Case IPR2015-01714
`Patent 7,072,667 B2
`____________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`

`
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION. .................................................................................. 1
`
`A. Overview. ............................................................................................. 1
`
`B. Overview of the ‘667 Patent. ................................................................ 2
`
`C. Overview of Johansson. ........................................................................ 6
`
`D. Overview of Boss. ................................................................................ 9
`
`E. Overview of Reed. ................................................................................ 9
`
`II. ARGUMENT ......................................................................................... 10
`
`A. Claim Construction. ............................................................................ 10
`
`1. Location Finding Information Includes Information Concerning a
`Location at Which a Mobile Station is Located. .................................... 13
`
`2. The Location Finding information is “Based on the Cell Occupied
`by at Least One Mobile Station.” ........................................................... 16
`
`B. Claims 12-15 are Patentable over Johansson and Boss. ..................... 17
`
`1. The Combination of Johansson and Boss Fails to Suggest
`Requesting or Receiving “Location Finding Information” as Claimed. 17
`
`2. The Combination of Johansson and Boss Fails to Suggest Providing
`a Location Finding Service Without Preregistering a Mobile Station for
`the Location Finding Service, as Claimed. ............................................ 22
`
`3. The Combination of Johansson and Boss Does Not Suggest
`Retrieving Data Corresponding to Location Finding Information Based
`on the Cell Occupied by at Least One Mobile Station. .......................... 34
`
`C. Claim15 is Patentable over Johansson, Boss, and Reed. .................... 36
`
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`III. CONCLUSION. ................................................................................. 38
`
`ii
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`

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`
`
`CERTIFICATE OF SERVICE ..................................................................... 39
`
`CERTIFICATE OF SERVICE ................................................................... .. 39
`
`CERTIFICATE OF COIVIPLIANCE .......................................................... ..40
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`CERTIFICATE OF COMPLIANCE ............................................................ 40
`
`
`
`
`iii
`
`iii
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`

`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ................................................................. 12
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ........................................................... 21, 37
`
`CLIO USA, Inc. v. The Procter and Gamble Company,
`Case No. IPR2013-00448 (PTAB Feb. 4, 2014) ....................................... 32
`
`Google Inc. v. Jongerious Panoramic Techs., LLC,
`Case No. IPR2013-00191 (PTAB Feb. 13, 2014) ..................................... 10
`
`Hartness Int’l. Inc. v. Simplimatic Engineering Co.,
`819 F.2d 1100 (Fed. Cir. 1987) ................................................................. 21
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ................................................................. 11
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) ................................................................. 12
`
`In re Keller,
`642 F.2d 413 (CCPA 1981) ....................................................................... 19
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................. 12
`
`In re Royka,
`490 F.2d 981 (CCPA 1974) ....................................................................... 19
`
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ........................................................... 10, 11
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ..................................................... 11, 12, 13
`
`iv
`
`

`
`In re Wilson,
`424 F.2d 1382 (CCPA 1970) ..................................................................... 19
`
`Innova/Pura Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ................................................................. 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 21
`
`Marine Polymer Techs., Inc. v. Hemcon, Inc.,
`672 F.3d 1350 (Fed. Cir. 2012) ................................................................. 11
`
`Openwave Sys., Inc. v. Apple Inc.,
`808 F.3d 509 (Fed. Cir. 2015) ................................................................... 34
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`Case No. IPR2013-00466 (PTAB Jan. 28, 2014) ...................................... 32
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................. 11
`
`Renishaw PLC v. Marposs Societa’per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998), ................................................................ 11
`
`Rhine v. Casio, Inc.,
`183 F.3d 1342 (Fed. Cir. 1999) ................................................................. 11
`
`Samsung Elecs. Co., Ltd. v. Va. Innov. Scis., Inc.,
`Case No. IPR2013-00569 (PTAB Oct. 30, 2013) ..................................... 10
`
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ................................................................... 12
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`REGULATIONS
`37 C.F.R. § 42.100(b) ................................................................................... 10
`
`
`OTHER AUTHORITIES
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ......................................................... 10
`
`v
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`

`
`EXHIBIT LIST
`
`Description
`
`Transcript of deposition of Chris G. Bartone, Ph.D. (May
`4, 2016).
`
`Declaration of Alon Konchitsky, Ph.D.
`
`
`
`Exhibit No.
`
`2001
`
`
`2002
`
`
`
`
`
`vi
`
`

`
`I. INTRODUCTION.
`A. Overview.
`Trial was instituted with respect to claims 12-15 of U.S. Patent
`
`7,072,667 (the “’667 patent”) to consider:
`
`(a) whether claims 12-15 are patentable under 35 U.S.C. § 103(a) over
`
`U.S. Patent No. 6,442,391 to Johansson et al. (“Johansson”) (Ex.
`
`1003) in view of U.S. Patent No. 7,444,156 to Boss et al. (“Boss”)
`
`(Ex. 1004); and
`
`(b) whether claim 15 is patentable under 35 U.S.C. § 103(a) over
`
`Johansson in view of Boss and U.S. Patent No. 6,275,707 to Reed
`
`et al. (“Reed”) (Ex. 1005).
`
`Paper No. 8 at 19. The Board should resolve all of these questions in favor
`
`of Patent Owner, Core Wireless Licensing, because:
`
`(a) the combination of Johansson and Boss does not suggest
`
`requesting or receiving location finding information, as claimed;
`
`(b) the combination of Johansson and Boss does not suggest providing
`
`a location finding service without pre-registering a mobile station
`
`for the location finding service, as claimed;
`
`(c) the combination of Johansson and Boss does not suggest location
`
`
`
`finding information that is included in a message received in
`
`1
`
`

`
`response to a request is that location finding information which is
`
`based on the cell occupied by the subject at least one mobile
`
`station, as claimed; and
`
`(d) the combination of Johansson, Boss and Reed does not suggest
`
`sending the same message received by a mobile station from that
`
`mobile station to another mobile station, as required by claim 15.
`
`
`
`B. Overview of the ‘667 Patent.
`The ‘667 patent discloses a location information service for mobile
`
`stations in a cellular telecommunications network. In accordance with
`
`embodiments of the invention, a request for location finding information is
`
`sent as a message through the network to a location message server. The
`
`location message server has an associated data store that contains location
`
`finding information based on cells of the network within which mobile
`
`stations may be located. Location finding information based on the cell
`
`occupied by at least one mobile station is derived from the data store and
`
`sent through the network from the location message server as a message to
`
`the mobile station that requested the information. According to the
`
`invention, the service is provided without requiring pre-registration of the
`
`subscriber that uses the mobile station with the location finding service. See,
`
`
`
`2
`
`

`
`e.g., Ex. 1001 at 8:1-13; 1:52 – 2:2; 3:36 – 4:14; 5:24-27.
`
`An example of the process is illustrated in Figure 3, which refers to
`
`network elements shown in Figure 1. These illustrations are reproduced
`
`below.
`
`At step S3.1, a mobile station MS1 sends a request 15 in the form of a
`
`
`
`message via base station controller BTS1 to the network PLMN 1. The
`
`
`
`3
`
`

`
`request 15 includes the telephone number of MS1 together with category
`
`data D1, D2, or D3. Id. at 3:36-46. The category data includes information
`
`concerning landmarks, etc. within individual network cells. Id. at 3:51 – 4:7.
`
`The message from MS1 is passed from the network (PLMN 1) to an
`
`SMS message center (SMSC) 10 at step S3.2, as request 16. Request 16
`
`contains the data from request 15 (which identifies the requesting mobile
`
`station (MS1) and the data being sought) as well as the cell identity. Id. at
`
`3:36-48. The SMSC 10 refers the request to a location message server 11,
`
`which refers to the database 12 in order to fetch stored data corresponding to
`
`the cell in which a mobile station for which location finding information is
`
`sought is located. Id. at 3:49-52.
`
`At step S3.4, the location message server provides the requested data
`
`18 as a message to the SMSC 10 in response to the request. The SMSC 10
`
`then creates a message 19 containing the retrieved data from the location
`
`message server 11 and the resulting message is sent, at step S3.5, to PLMN1,
`
`and thence, as message 20, to mobile station MS1, at step S3.6. The message
`
`can be then displayed by MS1 and, if appropriate, stored therein for future
`
`use. Id. at 3:49 – 4:14.
`
`An important feature of this process is that it is performed without the
`
`need to form pre-registered groups of users. Id. at 1:66-67. That is, “each
`
`
`
`4
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`

`
`individual mobile station can make use of the location information service
`
`without having to pre-register” with the location finding service. Id. at 1:67
`
`– 2:2.
`
`As noted in the Background of the ‘667 patent, prior location finding
`
`services required a user to subscribe to a location finding service, for
`
`example to define (with the location finding service) lists of individual
`
`subscribers that the user wanted to be able to locate. Id. at 1:34-38. “This
`
`involves a pre-registration procedure with the vendor of the [location
`
`finding] service.” Id. at 1:37-39. “A disadvantage of this system is that the
`
`user needs to pre-register with the system and only has access to the location
`
`of members of the relevant group.” Id. at 1:46-48. In accordance with the
`
`invention of the ‘667 patent, however, this requirement is eliminated.
`
`“The invention provides a location information service for mobile
`
`stations in a cellular telecommunications network that is provided
`
`independently of an aforesaid vendor.” Id. at 1:52-54 (emphasis added).
`
`Therefore, “there is no need to form pre-registered groups of users and each
`
`individual mobile station can make use of the location information service
`
`without having to pre-register [for the location finding service].” Id. at 1:66
`
`– 2:2 (emphasis added); and see id. at 5:24-27 (“[T]here is no need to pre-
`
`register with the location service that may be provided free of charge by the
`
`
`
`5
`
`

`
`network operator, or at the usual tariff for SMS messages.”).
`
`
`
`C. Overview of Johansson.
`Johansson describes systems and methods for determining the
`
`geographical location of a terminal in a telecommunications network.
`
`Johansson provides an illustration of such a communications system in
`
`Figure 1:
`
`
`
`“The mobile locating node MPC provides a mobile locating service, which
`
`means that the node MPC will establish the location of a mobile station MS,
`
`MS1-MS3 in response to a request from a second party A2 in this respect
`
`and inform this second party of the geographical position of the mobile
`
`station.” Ex. 1003 at 4:55-60.
`
`
`
`6
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`

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`
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`Johansson discusses several examples in connection with the
`
`disclosed locating service. In connection with an example discussed with
`
`reference to Fig. 4, A2 seeks the whereabouts of mobile station MS. Id. at
`
`5:35 et seq. According to Johansson, a command K1 is sent from the mobile
`
`locating node MPC to the mobile switching center MSC for the MSC to
`
`collect locational data relating to the mobile station MS and send it to the
`
`MPC. The MSC collects locational data relating to MS and sends it to the
`
`MPC. The MPC then establishes the geographical location of MS with the
`
`aid of the received locational data and presents the result to A2 in a message
`
`M2. Id. at 5:41-46; 5:55 – 6:6. In other words, in this example A2 requests
`
`and receives the location of mobile station MS.
`
`In an example discussed in connection with Fig. 5, A2 sends a
`
`message M1 requesting the geographical location of mobile station MS. Id.
`
`at 6:26 et seq. This is essentially the same as the Figure 4 example, except
`
`for an optional step concerning a check to determine if A2 is authorized to
`
`receive the requested information (i.e., a check to see if A2 is registered with
`
`the MPC). Id. at 6:29-33; 11:31-35. Regardless of whether such a check is
`
`made or not, A2 requests and receives the location of MS. Id. at 7:11-19.
`
`In a further example, discussed in connection with Fig. 6, A1 contacts
`
`service provider A2 and requests a service for which the location of A1 is
`
`
`
`7
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`

`
`necessary. Id. at 9:28 et seq. In this scenario, the service being requested by
`
`A1 and provided by A2 “may involve a route description or the whereabouts
`
`of the nearest hamburger restaurant.” Id. at 9:25-27. In this process, “the
`
`location of the mobile station MS is determined . . . by sending a command
`
`K1 [from the MPC] to the mobile switching center that collects mobile
`
`station MS location data, and sends this data back to the mobile locating
`
`node MPC.” Id.at 9:54-58. The MPC then sends the location of MS to A2.
`
`Id.at 9:58-60.
`
`In another example, described in connection with Fig. 7, A1 requests
`
`“a mobile station MS-location related service from A2.” Id. at 10:9 et seq.
`
`“[T]he service provider contacts the mobile locating node MPC to find out
`
`the location of the user A1 and the mobile locating node MPC checks that
`
`the service provider A2 is registered.” Id. at 10:15-18. This authorization
`
`check is later said to be optional. Id. at 11:31-35. In either case, the steps
`
`concerning obtaining the location of A1 are the same as those used in the
`
`Fig. 6 example. Id. at 10:45-47.
`
`One further example is discussed in connection with Fig. 8. Similar to
`
`the examples described in connection with Figs. 6 and 7, user A1 requests
`
`mobile station MS location dependent services from A2, but in this example,
`
`A1 need not give explicit permission to disclose its location. Still, an
`
`
`
`8
`
`

`
`optional check may be made to see if A2 is “known.” Id. at 10:48 et seq.;
`
`11:31-35. In either case, the request and response concern the location of
`
`mobile station MS. Id. at 11:12-18.
`
`
`
`D. Overview of Boss.
`Boss describes “a cellular telephone location application and service
`
`that are controlled by a cellular telephone user.” Ex. 1004 at 1:7-8. In
`
`particular, Boss discusses adding “a user-controlled cellular telephone
`
`positioning feature by which a cellular telephone user may correlate a user-
`
`specified location name with a cellular telephone location among one or
`
`more cells of a cellular telephone network.” Id. at 1:21-25. By maintaining
`
`the location data on the user’s phone, Boss states the user can “selectively
`
`make the location information available to others.” Id. at 1:35-37.
`
`
`
`E. Overview of Reed.
`Reed describes “[a] method and apparatus for assigning location
`
`estimates from a first transceiver of a plurality of wireless transceivers to a
`
`second transceiver.” Ex. 1005 at Abst. There is no mention of the first
`
`transceiver having received the location estimate from any other source.
`
`
`
`
`
`9
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`

`
`
`
`II. ARGUMENT
`A. Claim Construction.
`In the arguments below,1 Patent Owner distinguishes the claims over
`
`the art cited by Petitioner and, in doing so, adopts certain constructions of
`
`various claim terms. Patent Owner notes that the Board has indicated that it
`
`will interpret the claims of a challenged patent using a “broadest reasonable
`
`construction” approach. Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48766 (Aug. 14, 2012); and see 37 C.F.R. § 42.100(b). However,
`
`this standard is an examination expedient, not a rule of claim construction.
`
`In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009). Inasmuch as the
`
`present proceeding is adjudicatory in nature, and is not an examination or
`
`even a reexamination of the challenged claims, see, e.g., Google Inc. v.
`
`Jongerious Panoramic Techs., LLC, Case No. IPR2013-00191, Paper No.
`
`50, slip op. at 4 (PTAB Feb. 13, 2014), the claims should be construed as in
`
`other adjudicatory proceedings: to give the claims the meaning they would
`
`
`
`1 Patent Owner reserves the right to pursue claim constructions in a district
`
`court according to the standards applicable in that venue. See Samsung
`
`Elecs. Co., Ltd. v. Va. Innov. Scis., Inc., Case No. IPR2013-00569, Paper 9,
`
`slip op. at 2 (PTAB Oct. 30, 2013).
`
`
`
`10
`
`

`
`have to a person of ordinary skill in the art at the time of the invention,
`
`Innova/Pura Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
`
`1116 (Fed. Cir. 2004), to cover what was actually invented and what the
`
`inventor intended them to cover, Renishaw PLC v. Marposs Societa’per
`
`Azioni, 158 F.3d 1243 (Fed. Cir. 1998), and, where possible, to preserve
`
`their validity. Marine Polymer Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350,
`
`1368 (Fed. Cir. 2012); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir.
`
`1999); and see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc).
`
`Even if the Board applies the broadest reasonable construction
`
`standard, it is important to recognize that such an interpretation of a claim’s
`
`language is not one that permits any reading thereof. Instead, it is one that
`
`must be made “in light of the specification as it would be interpreted by one
`
`of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004); see also In re Suitco Surface, Inc., 603 F.3d
`
`1255, 1260 (Fed. Cir. 2010) (“The broadest-construction rubric coupled with
`
`the term ‘comprising’ does not give the PTO an unfettered license to
`
`interpret claims to embrace anything remotely related to the claimed
`
`invention.”), and In re Skvorecz, 580 F.3d at 1267 (“The protocol of giving
`
`claims their broadest reasonable interpretation . . . does not include giving
`
`
`
`11
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`

`
`claims a legally incorrect interpretation.”). The focus of the inquiry
`
`regarding the meaning of a claim should be what would be reasonable from
`
`the perspective of one of ordinary skill in the art, In re Suitco Surface, Inc.,
`
`603 F.3d at 1260, and an interpretation that is inconsistent with the express
`
`disclosure and objectives of the patent is not “reasonable.” See, e.g., In re
`
`Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999). Thus, unless the patentee
`
`has clearly demonstrated an intention to stray, there is a “heavy
`
`presumption” that a claim term carries its ordinary and customary meaning.
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`In proceedings such as this, in which the patent has been brought back
`
`to the agency for a second review, the Board should also consult the patent's
`
`prosecution history when determining the meaning of the claims. See Tempo
`
`Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). This is in
`
`addition to reading the claims in light of the specification and teachings in
`
`the underlying patent, as even under the broadest reasonable interpretation,
`
`the Board's construction “cannot be divorced from the specification and the
`
`record evidence,” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and
`
`“must be consistent with the one that those skilled in the art would reach.” In
`
`re Cortright, 165 F.3d at 1358. A construction that is “unreasonably broad”
`
`
`
`12
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`

`
`and which does not “reasonably reflect the plain language and disclosure”
`
`will not pass muster. In re Suitco Surface, Inc., 603 F.3d at 1260.
`
`
`
`1. Location Finding Information Includes Information Concerning a
`Location at Which a Mobile Station is Located.
`
`Claims 12 and 13 are the independent claims at issue in this
`
`proceeding. These claims recite:
`
`12. A method of operating a mobile station to receive
`location information from a location finding service in a
`cellular telecommunications network, comprising:
`sending a request for location finding information
`from a mobile station as a message through the network
`to a location message server; and
`receiving from the location message server, a
`message containing the location finding information
`based on the cell occupied by at least one mobile station;
`and wherein
`the method is performed without pre-registering
`the mobile station for the location finding service.
`
`13. A mobile station for receiving location finding
`information from a location finding service in a cellular
`telecommunications network, comprising:
`circuitry operable to send a request for location
`finding information from a mobile station as a message
`
`13
`
`
`
`

`
`through the network to a location message server; and
`circuitry operable to receive from the location
`message server, a message containing location finding
`information based on the cell occupied by at least one
`mobile station; and wherein
`provision of the location finding information being
`made without pre-registering the mobile station with the
`location finding service.
`
`Ex. 1001 at 8:1-26. As indicated, each of these claims recites “location
`
`finding information.”
`
`During prosecution of the application that became the ‘667 patent, the
`
`term “location information” in the body of the claim was changed to
`
`“location finding information.” Ex. 1002 at 35. In discussing this revision,
`
`the applicant distinguished the claims over Lehikoinen, which was said to
`
`disclose a mobile device transmitting a general location to a service
`
`provider. Id. at 40. However, according to the applicant, “the transmission of
`
`location information is not a request involving a location finding service in
`
`conjunction with location finding information . . . .” Id.at 40 (emphasis
`
`added).
`
`Moreover, in discussing the example shown in Fig. 3, the
`
`Specification provides that, “The request 15 contains the telephone number
`
`(MISDN) of MS1 together with category data D1, D2 or D3 discussed in
`
`
`
`14
`
`

`
`more detail below. The request 16 contains the data from request 15 and the
`
`cell identity, cell C1 in this
`
`example, obtained from network
`
`PLMN1.” Ex. 1001 at 3:44-48.
`
`Petitioner’s declarant agrees that
`
`request 15 is an example of the request recited in claims 12 and 13. Ex. 2001
`
`at 56:6 – 57:8; 66:2-12. D1, D2, and D3 are later described as landmark data
`
`(D1), railway station data (D2), and restaurant data (D3). Ex. 1001 at 3:52-
`
`65; 4:1-7. According to the specification then, what is returned to the
`
`requesting handset in response to a request is one of D1, D2, or D3, for a
`
`given telecommunications network cell. Id. at 3:66 – 4:7; and see id. at 4:19-
`
`23, 35-39.
`
`
`
`Thus, the “location finding information” that is the subject of the
`
`request sent from the mobile station and which is included in the message
`
`received from the message finding server includes information concerning
`
`the location in which the “at least one mobile station” is located. Examples
`
`of location finding information include landmark data (D1), railway station
`
`data (D2), and restaurant data (D3). This is not merely the geographic
`
`location of that at least one mobile station. Ex. 2002 at ¶ 57.
`
`
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`
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`15
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`2. The Location Finding information is “Based on the Cell Occupied
`by at Least One Mobile Station.”
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`Claims 12 and 13 each specify receipt of / circuitry operable to
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`receive “a message containing [the] location finding information based on
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`the cell occupied by at least one mobile station.” A person of ordinary skill
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`in the art reading these claims would understand that the location finding
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`information is based on the cell occupied by the at least one mobile station.
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`Ex. 2001 at 61:12-16; 64:5 – 65:5; Ex. 2002 at ¶ 60. Such an understanding
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`is consistent with the specification. See Ex. 1001 at 3:41 et seq. (explaining
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`that the SMSC refers the request to the location messaging server, which
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`request by this time has been augmented with the cell identity, C1 in the
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`example, obtained from the network. The SMSC obtains through the
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`location messaging server the data from the database, which, as shown in
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`Table 1, stores the data in cell-organized fashion).
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`Thus, the location finding information that is included in the message
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`
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`received in response to the request is that location finding information which
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`16
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`is based on the cell occupied by the subject at least one mobile station. Ex.
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`2002 at ¶ 60.
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`
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`B. Claims 12-15 are Patentable over Johansson and Boss.
`1. The Combination of Johansson and Boss Fails to Suggest Requesting
`or Receiving “Location Finding Information” as Claimed.
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`Recall that Johansson describes several examples of the mobile
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`locating service provided by the mobile locating node MPC. In the example
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`described with respect to Fig. 4, A2 seeks the whereabouts of mobile station
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`MS. Ex. 1003 at 5:35 et seq. In this case, the MPC establishes the location of
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`MS with the aid of locational data from the mobile switching center MSC
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`and presents the location of MS to second party A2 in a message M2. Id. at
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`5:41-46; 5:55 – 6:6; Ex. 2001 at 13:11 – 16:2. Thus, a person of ordinary
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`skill in the art would understand that A2 receives the location of mobile
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`station MS. Ex. 2001 at 16:3 – 17:4.
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`Similarly, in the example described with respect to Fig. 5, A2 sends a
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`message M1 requesting the geographical location of mobile station MS, Ex.
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`1003 at 6:26 et seq., and later receives that geographical location from the
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`MPC. Id. at 7:11-19; Ex. 2001 at 17:6 – 20:10. Also, for the example
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`described in connection with Fig. 6, Johansson indicates that it is “the
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`17
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`location of the mobile station MS [that] is determined” and provided to A2.
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`Ex. 1003 at 9:54-55; Ex. 2001 at 20:11 – 22:12.
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`In the example described with respect to Fig. 7, Johansson indicates
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`that user A1 requests a service from service provider A2. Ex. 1003 at 10:9 et
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`seq. Thereafter, service provider A2 requests “the location of the user A1”
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`from the MPC and is provided with that location. Id. at 10:45-47; Ex. 2001
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`at 25:13 – 27:5. Similarly, in the example described in connection with Fig.
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`8, user A1 requests services from A2, but in this example A1 need not give
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`explicit permission to disclose its location. Ex. 1003 at 10:48 et seq. A2
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`again requests the location of mobile station MS and is provided that
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`location. Id. at 11:12-18; Ex. 2001 at 27:6 – 29:6.
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`Thus, in each of the scenarios described by Johansson, what is
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`requested in the message sent over the network is the location of the mobile
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`station MS associated with user A1. That location of mobile station MS is,
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`in turn, what is provided to A2 by the mobile locating node MPC based on
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`information received from the mobile switching center MSC. This is
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`different from the subject matter recited in claims 12 and 13, because, in
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`each instance, what is received by A2 (even if it were a mobile station as
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`alleged by Petitioner when considering the combination with Boss) is only
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`18
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`“the location of the mobile station MS,” not location finding information as
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`required by claims 12 and 13. Ex. 2002 at ¶ 62.
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`Obviousness under 35 U.S.C. § 103(a) is a legal conclusion predicated
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`on underlying facts. To establish a prima facie case of obviousness
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`Petitioner must, at a minimum, address the patented invention and establish
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`a factual basis for finding each of the features of the challenged claims in the
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`prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“all words in a
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`claim must be considered in judging the patentability of that claim against
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`the prior art.”); and see In re Royka, 490 F.2d 981, 985 (CCPA 1974)
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`(obviousness requires a suggestion of all limitations in a claim); In re Keller,
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`642 F.2d 413, 425 (CCPA 1981) (obviousness is tested by “what the
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`combined teachings of the references would have suggested to those of
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`ordinary skill in the art.”).
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`In connection with the challenges to claims 12 and 13, the petition
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`cites Johansson’s method in which A2 receives the geographical position of
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`mobile station MS from mobile locating node MPC, Pet. 17–22, or,
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`alternatively, Johansson’s methods in which user A1 of a mobile station
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`requests a service for which geographical information is necessary, id. at 18–
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`19. But, as demonstrated above, and acknowledged by Petitioner’s declarant,
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`in each of these cases Johansson does not teach or suggest requesting or
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`19
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`

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`receiving location finding information, as claimed, but rather only the
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`location of mobile station MS. Even if one considers the request from A1 in
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`connection with the Fig. 6 example of Johansson to be a request for
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`“location finding information” (e.g., a nearest hamburger restaurant), Pet. at
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`19, what is received from the location message server (i.e., the mobile
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`locating node MPC, see Pet. at 22-23) is still not location finding
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`information. The location message server (i.e., the MPC) provides only the
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`location of A1. Ex. 1003 at 9:54-55; Ex. 2001 at 20:11 – 22:12. It is A2 that
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`gives the nearest hamburger restaurant. Ex. 2001 at 22:13 – 25:12. The same
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`is true in the examples provided for Figs. 7 and 8. Ex. 1003 at 10:45-47,
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`11:12-18; Ex. 2001 at 25:13 – 29:6.
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`To summarize, claims 12 and 13 of the ‘667 patent each require
`
`sending a request for location finding information from a mobile station as a
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`message through a network to a location message server; and receiving from
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`the location message server, a message containing the location finding
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`information. In Johansson’s examples concerning Figs. 4 and 5, the request
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`sent to the MPC (which Petitioner contends is the location message server)
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`is only for location information, not location finding information, and what
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`is received from the MPC is only location information, not location finding
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`information. In Johansson’s examples concerning Figs. 6, 7, and 8, even if
`
`
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`20
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`

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`the request from A1 is deemed to be for location finding information, it
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`nevertheless remains the case that no location finding information is ever
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`received from the MPC. All that is received from the MPC is the location of
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`MS. Therefore, even if as Petitioner contends, a person of ordinary skill in
`
`the art would have found it obvious to make A2 a mobile station in
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`accordance with the teachings of Boss, Pet. at 21, one still would not arrive
`
`at the subject matter recited in claims 12 and 13 for at least the reasons given
`
`above. Ex. 2002 at ¶¶ 63-65. Thus, claims 12 and 13 are patentable over
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`Johansson and Boss. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421
`
`(2007) (obviousness requires that a person of ordinary skill at the time of the
`
`invention would have selected and combined those prior art elements in the
`
`normal course of research and development to yield the claimed inven