Paper No. __
`Filed: August 5, 2016
`
`Filed on behalf of: Google Inc. and LG Electronics, Inc.
`
`By: Naveen Modi (Google_LG-CoreWireless-IPR@paulhastings.com)
`Joseph E. Palys (Google_LG-CoreWireless-IPR@paulhastings.com)
`Daniel Zeilberger (Google_LG-CoreWireless-IPR@paulhastings.com)
`Paul Hastings LLP
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE INC.,
`LG ELECTRONICS, INC.
`Petitioners
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.
`Patent Owner
`
`____________________
`
`Case IPR2015-01714
`Patent No. 7,072,667
`____________________
`
`PETITIONER’S REPLY BRIEF
`
`

`
`Case IPR2015-01714
`U.S. Patent No. 7,072,667
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`B.
`
`Introduction ..................................................................................................... 1
`Patent Owner’s Constructions Are Unreasonably Narrow or Irrelevant........ 1
`A.
`Patent Owner’s Narrow Construction For “Location Finding
`Information” is Inconsistent With the Intrinsic Record and
`Patent Owner’s Own Past Arguments .................................................. 1
`Patent Owner’s Discussion of the “Based on the Cell Occupied
`by at Least One Mobile Station” Limitation is Irrelevant .................... 6
`III. Claims 12–15 Are Obvious in View of Johansson and Boss ......................... 7
`The Combination of Johansson and Boss Discloses Requesting
`A.
`and Receiving “Location Finding Information” .................................. 7
`The Combination of Johansson and Boss Discloses the
`“Without Pre-registering” Recitation ................................................... 8
`The Combination of Johansson and Boss Discloses
`1.
`Providing a Location Finding Service to a Mobile Station
`in a Cellular Telecommunications Network .............................. 8
`The Combination of Johansson and Boss Discloses
`Providing a Location Finding Service to a Mobile Station
`in a Cellular Telecommunications Network Without Pre-
`registering the Mobile Station for the Location Finding
`Service ...................................................................................... 11
`The “Without Pre-registering” Recitation is a Negative
`Limitation ................................................................................. 15
`The Combination of Johansson and Boss Discloses “Location
`Finding Information Based On the Cell Occupied By at Least
`One Mobile Station” ........................................................................... 17
`IV. Claim 15 is Obvious in View of Johansson, Boss, and Reed ....................... 20
`V.
`Patent Owner’s Expert Should Be Accorded Little Weight ......................... 21
`VI. Conclusion .................................................................................................... 22
`Certificate of Compliance
`Certificate of Service
`
`2.
`
`3.
`
`C.
`
`i
`
`

`
`Case IPR2015-01714
`U.S. Patent No. 7,072,667
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`BlackBerry Corp. v. Zipit Wireless, Inc.,
`IPR2014-01507, Paper No. 50 (Mar. 29, 2016) ................................................. 21
`
`CLIO USA, Inc. v. The Procter and Gamble Company,
`IPR2013-00448, Paper No. 15 (Feb. 4, 2014) .................................................... 16
`
`Facebook, Inc. v. Pragmatus AV, LLC,
`582 F. App’x 864, 869 (Fed. Cir. 2014), reh'g denied (Oct. 30,
`2014) ..................................................................................................................... 6
`
`Google Inc. v. Core Wireless Licensing S.A.R.L.,
`IPR2015-01715, Paper No. 8 (Feb. 18, 2016) .................................................... 15
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR2013-00466, Paper No. 17 (Jan. 28, 2014) ............................................. 16, 17
`
`Süd-Chemi, Inc. v. Multisorb Techs., Inc.,
`554 F.3d 1001 (Fed. Cir. 2009) .......................................................................... 16
`
`Upsher-Smith Labs, Inc. v. Pamlab, L.L.C.,
`412 F.3d 1319 (Fed. Cir. 2005) .......................................................................... 16
`
`Regulations
`
`37 C.F.R. § 1.75(c) ..................................................................................................... 3
`
`
`
`ii
`
`

`
`Case IPR2015-01714
`U.S. Patent No. 7,072,667
`
`LIST OF EXHIBITS
`
`Previously
`Submitted
`X
`X
`
`X
`X
`X
`
`X
`X
`
`X
`X
`X
`
`X
`
`
`
`
`
`
`Exhibit
`No.
`1001 U.S. Patent No. 7,072,667 (“the ’667 patent”)
`1002
`File History of U.S. Patent No. 7,072,667 (U.S. Patent
`Application No. 10/029,940 (“the ’940 application”))
`1003 U.S. Patent No. 6,442,391 to Johansson et al.
`(“Johansson”)
`1004 U.S. Patent No. 7,444,156 to Boss et al. (“Boss”)
`1005 U.S. Patent No. U.S. Patent No. 6,275,707 to Reed et al.
`(“Reed”)
`PCT Application No. WO 03/056853 (“the ’853 PCT”)
`Excerpts From File History for PCT Application No. WO
`03/056853
`1008 Declaration of Dr. Chris G. Bartone
`1009
`Excerpt From Webster’s II Dictionary, 2001
`Joint Claim Construction and Prehearing Statement, Core
`1010
`Wireless Licensing S.A.R.L. v. LG Electronics, Inc., Case
`No. 2:14-cv-00911 (E.D. Tex. June 5, 2015)
`Core Wireless Licensing S.A.R.L.’s Opening Claim
`Construction Brief, Core Wireless Licensing S.A.R.L. v.
`LG Electronics, Inc., Case No. 2:14-cv-00911 (E.D. Tex.
`July 27, 2015)
`1012 Deposition of Alon Konchitsky, Ph.D., July 22, 2016
`1013
`Plaintiff’s Disclosure of Asserted Claims and
`Infringement Contentions, Core Wireless Licensing
`S.A.R.L. v. LG Electronics, Inc., Case No. 2:14-cv-00911
`(E.D. Tex.)
`1014 U.S. Patent No. 6,847,823 to Lehikoinen et al.
`(“Lehikoinen”)
`
`1006
`1007
`
`1011
`
`Description
`
`
`
`iii
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`

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`Case IPR2015-01714
`U.S. Patent No. 7,072,667
`
`I.
`
`Introduction
`
`Petitioners Google Inc. and LG. Electronics, Inc. (collectively, “Petitioners”)
`
`reply to the Patent Owner’s Response (Paper No. 12, “Response”) filed by Patent
`
`Owner Core Wireless Licensing S.A.R.L. (“Patent Owner”) and the Board’s
`
`decision to institute inter partes review (Paper No. 8, “Institution Decision”) of
`
`U.S. Patent No. 7,072,667 (“the ’667 patent”). Patent Owner’s arguments should
`
`be rejected and claims 12–15 of the ’667 patent found unpatentable for at least the
`
`reasons set forth in the Petition (Paper No. 3) and accompanying exhibits, the
`
`Board’s Institution Decision, cross-examination testimony, and the additional
`
`reasons below.
`
`II.
`
`Patent Owner’s Constructions Are Unreasonably Narrow or Irrelevant
`
`Patent Owner’s constructions are unreasonably narrow, import features into
`
`the claims, and/or are irrelevant to the issues in this case.
`
`A.
`
`Patent Owner’s Narrow Construction For “Location Finding
`Information” is Inconsistent With the Intrinsic Record and Patent
`Owner’s Own Past Arguments
`
`Patent Owner argues that under the Broadest Reasonable Interpretation
`
`(BRI) standard, the claimed “location finding information”—a term that does not
`
`appear anywhere in the ’667 patent specification—includes “information
`
`concerning the location in which the ‘at least one mobile station’ is located,” but
`
`excludes “merely the geographic location of that at least one mobile station.”
`
`1
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`

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`U.S. Patent No. 7,072,667
`Response at 15. Patent Owner’s attempt to carve out geographical locations of
`
`mobile stations from the BRI of “location finding information” should be rejected
`
`because it contradicts the specification, the claims, and Patent Owner’s allegations
`
`in district court under the narrower Phillips standard.
`
`The ’667 patent specification repeatedly describes the geographic location of
`
`a mobile station as being one type of information returned based on the cell
`
`occupied by the mobile station. For example, in the context of Figure 4, the
`
`specification recites a “process by which the user of mobile station MS1 obtains
`
`information concerning the location of mobile station MS2.” Ex. 1001 at 4:15–17;
`
`see also id. at 4:30–31 (disclosing to “determine whether the user of MS2 is
`
`content to allow its positional information to be communicated to others”)
`
`(emphasis added). And in the context of Figure 6, the specification contemplates
`
`“MS1 [being] provided with positional information concerning MS2.” Ex. 1001 at
`
`4:64–66 (emphasis added); see also Ex. 1012 at 45:21–47:3. Indeed, in district
`
`court, to explain the “[i]nvention,” Patent Owner stated “[t]he ’667 patent allows a
`
`person to determine their location (by using the location of their cell phone).” Ex.
`
`1011 at 13 (emphasis added); see also id. at 17 (referring to a “determination of [a
`
`mobile station’s] location”); Ex. 1001 at 5:45–51 (explaining how such positional
`
`data may be determined); Ex. 1012 at 48:3–50:18.
`
`2
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`

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`U.S. Patent No. 7,072,667
`Patent Owner’s position is also inconsistent with the BRI of the claims. For
`
`example, claim 1 does not exclude the geographic location of a mobile station from
`
`“location finding information.” Instead, the claim merely recites, inter alia, “a
`
`request for location finding information from a mobile station” and “retrieving data
`
`from a data store corresponding to the location finding information. Dependent
`
`claim 3 further recites that “the request from the mobile station is for data
`
`concerning the location of another mobile station, and the method includes
`
`retrieving location data from the data store based on the cell occupied by the other
`
`mobile station . . . .” Thus, claim 3 explains that the “request for location finding
`
`information” may simply be a request for a “location,” and the “location finding
`
`information” may simply be “location data.” Patent Owner’s expert agreed:
`
`Q. And then claim 3, would you agree, deals with the
`scenario where a request from a mobile station is for the
`location of another mobile station?
`
`A. Yes.
`
`Ex. 1012 at 51:9–13 (emphasis added); see also id. at 51:14–25 (explaining the
`
`claimed “request” from the mobile station for the location of another mobile
`
`station is consistent with Figures 4 and 6 of the ’667 patent). Therefore, the BRI of
`
`the claimed “location finding information” recited in the challenged claims
`
`encompasses “the location” of a mobile station. See, e.g., 37 C.F.R. § 1.75(c).
`
`3
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`

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`Looking for support, Patent Owner points to one example associated with
`
`Figure 3 where “D1 - Landmark data,” “D2 - Railway station [data],” or “D3 -
`
`Restaurant data,” may be returned in response to a request sent by a mobile station.
`
`Response at 15; Ex. 1001 at 3:41–65. According to Patent Owner, D1, D2, and D3
`
`are examples of “location finding information.” Response at 15. But Patent
`
`Owner fails to mention that even in the context of Figure 3, the ’667 patent is
`
`open-ended and discloses that it can handle other types of data. See Ex. 1001 at
`
`3:55 (“. . . local restaurants, railway stations and the like”) (emphasis added). Even
`
`Patent Owner’s expert admitted during cross-examination that the category data in
`
`Figure 3 is “not limited to landmark data, railway data or restaurant data.” Ex.
`
`1012 at 31:11–20. In fact, nothing in the Figure 3 embodiment restricts category
`
`data (let alone “location finding information”) from being a geographic location of
`
`a mobile station. Indeed, the geographic location of a mobile device by itself is
`
`“information concerning the location in which the ‘at least one mobile station’ is
`
`located” as Patent Owner alleges the claimed “location finding information” must
`
`include. Response at 15.
`
`Patent Owner further argues that during prosecution, the term “location
`
`information” was amended to recite “location finding information,” and that “[i]n
`
`discussing this revision, the applicant distinguished the claims over Lehikoinen,
`
`which was said to disclose a mobile device transmitting a general location to a
`
`4
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`

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`U.S. Patent No. 7,072,667
`service provider.” Response at 14 (citing Ex. 1002 at 35, 40). In reality, during
`
`prosecution Patent Owner made a vague and convoluted assertion that “[w]hile
`
`Lehikoinen et al do disclose a circumstance in which the mobile device transmits a
`
`general location to a service provider when a desired information category is not
`
`located as discussed in column 7, lines 51-55, the transmission of location
`
`information is not a request involving a location finding service in conjunction
`
`with location finding information from a mobile station as a message through the
`
`network to a location message server and the resultant services are not without pre-
`
`registration as recited in the claims.” Ex. 1002 at 40; Ex. 1014 at 7:51–55
`
`(disclosing, in relevant part, that an “an indication of the general geographic
`
`location of the MS can be transmitted from the MS to a service provider server”).
`
`Accordingly, Patent Owner’s ambiguous statement, at best, argued that the prior
`
`art related to a transmission of information instead of the “requesting” required by
`
`the claims.
`
`Lastly, Patent Owner’s unreasonable interpretation of “location finding
`
`information” is directly opposite to its interpretation pursued in district court to
`
`support its infringement allegations. There, under the narrower Phillips standard,
`
`Patent Owner represented that the geographic location of a mobile station alone did
`
`read on the claimed “location finding information.” See, e.g., Ex. 1013 at 15
`
`(“returning the latitude and longitude of the user’s position”), 17 (“[l]ocation
`
`5
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`

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`U.S. Patent No. 7,072,667
`information is represented by latitude and longitude coordinates”), 19 (“location
`
`services” “checks on your location . . . to locate your device”); see also id. at 12,
`
`16, 18, 20–22, 25, 26.
`
`Patent Owner’s suggestion that the BRI of “location finding information”
`
`should now exclude what it alleged was included under the Phillips construction
`
`must be rejected. See Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864,
`
`869 (Fed. Cir. 2014), reh’g denied (Oct. 30, 2014) (“The broadest reasonable
`
`interpretation of a claim term may be the same as or broader than the construction
`
`of a term under the Phillips standard. But it cannot be narrower.”). Accordingly,
`
`Patent Owner’s improper attempt to unreasonably narrow “location finding
`
`information” to manufacture an alleged distinction from the prior art (as discussed
`
`below) should be rejected.
`
`B.
`
`Patent Owner’s Discussion of the “Based on the Cell Occupied by
`at Least One Mobile Station” Limitation is Irrelevant
`
`Patent Owner repeats the claim language in arguing that the claimed
`
`“location finding information” is “based on the cell occupied by the at least one
`
`mobile station.” Response at 16. But this is what is recited in claims 12 and 13,
`
`and so Patent Owner’s position is meaningless. It is also irrelevant to the issues in
`
`this case, as Petitioners have shown the prior art “location finding information” is
`
`also “based on the cell occupied by the at least one mobile station.” See, e.g., Pet.
`
`at 48, 50–51; see also Institution Decision at 17 (explaining Petitioners have shown
`
`6
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`Case IPR2015-01714
`U.S. Patent No. 7,072,667
`that in Johansson the “location finding information is collected based on the cell
`
`that is occupied”).
`
`To the extent, Patent Owner’s arguments suggest that the meaning of “based
`
`on the cell occupied by at least one mobile station” should be limited to a cell
`
`identity-based determination (Response at 16), that position should be rejected as it
`
`is inconsistent with the specification and the language of the claims. The ’667
`
`patent acknowledges that location finding information may be determined based on
`
`the cell occupied by a mobile station in ways other than a cell identifier and the
`
`claims do not limit such features to a cell identifier. See, e.g., Ex. 1001 at 5:45–51;
`
`see also Ex. 1012 at 49:15–24 (Patent Owner’s expert admitting it would “be fair
`
`to say that [angular resolution] provides a more precise position as compared to
`
`just using the cell ID” and that “[t]he timing advance would be even more accurate
`
`than . . . the prior angular resolution method”).
`
`III. Claims 12–15 Are Obvious in View of Johansson and Boss
`A. The Combination of Johansson and Boss Discloses Requesting
`and Receiving “Location Finding Information”
`Patent Owner argues that Johansson does not disclose “location finding
`
`information as required by claims 12 and 13” because “in each of the scenarios
`
`described by Johansson, what is requested in the message sent over the network is
`
`the location of the mobile station associated with user A1.” Response at 18–19.
`
`Thus, Patent Owner’s argument relies on its improper carve-out of geographic
`
`7
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`U.S. Patent No. 7,072,667
`locations of mobile stations from the scope of “location finding information.” But
`
`as discussed above, Patent Owner’s interpretation of the claims in this sense is
`
`improper and should be rejected. See supra Section II.A.1 As explained in the
`
`Petition, and as effectively conceded by Patent Owner’s admission as to
`
`Johansson’s disclosure of the determination of a “location of the mobile station
`
`associated with user A1” (Response at 18–19), Johansson discloses the “location
`
`finding information” features in the challenged claims. See e.g., Pet. at 18–22.
`
`Just like Patent Owner represented in district court, the prior art here discloses the
`
`geographic location of a mobile station as the claimed “location finding
`
`information.” Id. The Board agreed. Institution Decision at 17.
`
`B.
`
`The Combination of Johansson and Boss Discloses the “Without
`Pre-registering” Recitation
`The Combination of Johansson and Boss Discloses
`1.
`Providing a Location Finding Service to a Mobile Station
`in a Cellular Telecommunications Network
`
`Confusingly, to address the “without pre-registering” recitations of the
`
`claims, Patent Owner argues that “the preambles of claims 12 and 13 are properly
`
`1 Patent Owner’s assertion that “Petitioner’s declarant [acknowledged that]
`
`Johansson does not teach or suggest requesting or receiving location finding
`
`information, as claimed,” Response at 19–20, is not supported by any evidence and
`
`simply not true.
`
`8
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`Case IPR2015-01714
`U.S. Patent No. 7,072,667
`construed as being limitations of these claims,” while Johansson allegedly “does
`
`not teach a method of providing a location finding service to mobile stations in a
`
`cellular telecommunications network.” Response at 24. But Patent Owner does
`
`not explain how the preambles of claims 12 and 13 are in any way related to the
`
`“without pre-registering” recitation. In addition, Patent Owner’s assertion that the
`
`preambles are limiting represents yet another instance of Patent Owner pursuing a
`
`narrower construction under the BRI standard than the construction it advocated to
`
`a district court under the Phillips standard. See, e.g., Ex. 1011 at 25 (showing that
`
`Patent Owner represented that “[w]hile LG and Apple both assert the preambles of
`
`claims 12 and 13 are limiting [under the Phillips standard], there is no basis in law
`
`or fact to support that assertion.”).
`
`Moreover, Patent Owner is doubly wrong. First, as previously recognized
`
`by the Board, Johansson “specifically discloses mobile station MS user A1
`
`sending a request for information about the mobile station’s location, such as a
`
`route description or location of the nearest restaurant,” whereby the mobile station
`
`may be “in communication with [a] base station[] . . . location in [a] cell[].”
`
`Institution Decision at 8, 16 (citing Ex. 1003 at 4:16–27, 9:21–27); see also Ex.
`
`1003 at 4:16–17 (disclosing “mobile communications system GSM”). As such,
`
`Johansson does provide a location finding service to mobile stations in a cellular
`
`telecommunications network. Second, Patent Owner’s argument, which ignores
`
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`U.S. Patent No. 7,072,667
`Boss, is beside the point. Petitioners’ proposed grounds of unpatentability (and the
`
`grounds on which the Board instituted review) rely on Johansson in combination
`
`with Boss. See, e.g., Institution Decision at 16 (explaining that, in view of
`
`Johansson and Boss, it “would have been foreseeable, common sense, and
`
`predictable” to “implement[] A2 as a mobile station”). As recognized by the
`
`Board, “Boss . . . suggests the benefits (versatility, mobility, convenience, and
`
`access to popular messaging technologies) of using cell phones for issuing requests
`
`for location services.” Id. (citing Pet. at 21–22; Ex. 1004 at 1:9–20, 7:45–48).
`
`Thus, in view of Johansson’s suggestion to use a mobile station to issue a “request
`
`for information about [a] mobile station’s location” and “Boss’s suggestion
`
`regarding the benefits of using a cell phone to request location services . . . a
`
`skilled artisan would have found implementing A2 as a mobile station would have
`
`been foreseeable, common sense, and predictable.” Id. Patent Owner misses that
`
`in the combined system of Johansson and Boss, A2 would have been a mobile
`
`station operating in a cellular telecommunications network, and, as described
`
`below, no pre-registration with a location finding service would have been required
`
`for this mobile station. See, e.g., Pet. at 18–22; infra Section III.B.2. Patent
`
`Owner’s arguments against Johansson alone are deficient and should be rejected.
`
`10
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`2.
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`Case IPR2015-01714
`U.S. Patent No. 7,072,667
`The Combination of Johansson and Boss Discloses
`Providing a Location Finding Service to a Mobile Station
`in a Cellular Telecommunications Network Without Pre-
`registering the Mobile Station for the Location Finding
`Service
`Patent Owner argues that “in Johansson all mobile stations in the mobile
`
`communications system are pre-registered for the mobile locating service,”
`
`alleging that “all mobile stations set a special indicator, I, within the HLR – an
`
`indicator that is not normally included in cellular telecommunication networks.”
`
`Response at 26 (emphasis original). Patent Owner’s argument fails for several
`
`reasons.
`
`First, as the Board previously recognized, Johansson explicitly discloses that
`
`A2 does not have to be registered, e.g., to permit A2 to be “billed without prior
`
`registration in the mobile locating node MPC.” Institution Decision at 18 (citing
`
`Ex. 1003 at 11:31–39). According to Patent Owner, “even if it would have been
`
`obvious for the second party A2 ‘to be associated with a mobile station,’ . . . in
`
`such circumstances the mobile station with which party A2 would be associated
`
`would necessarily be pre-registered for the location finding service (by virtue of
`
`setting its indicator, I).” Response ta 31. But Patent Owner has not explained why
`
`mobile station A2, which is requesting the location of a different mobile station
`
`(A1), would necessarily include such an indicator (that, in any event, is not tied to
`
`pre-registration with a location finding service, as discussed below), which only
`
`11
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`relates to A1, the mobile station whose location is being requested. See, e.g., Ex.
`
`1003 at Fig. 4. In other words, the indicator in Johansson is not provided or
`
`required by the requesting device (e.g., A2), and Patent Owner provides no
`
`explanation why it would be in the combination of Johansson and Boss. Thus, as
`
`the “without pre-registering” recitations relate to the requesting mobile station,
`
`Patent Owner’s argument fails. See Ex. 1001 at claims 12, 13.
`
`Second, Patent Owner is wrong on the facts. Rather than being stored with
`
`the HLR for all mobile stations, Johansson discloses that the indicator may be
`
`placed in a “home location register HLR, . . . [or] in any other of the system nodes,
`
`for instance in the gateway MSC, referenced P, the visitor location register VLR,
`
`the mobile services switching center MSC, [] in the mobile station MS.” Ex. 1003
`
`at 11:42–50; Ex. 1008 at ¶ 41. In other words, while the indicator may be stored
`
`within an HLR (which Patent Owner incorrectly alleges is an unconventional
`
`component, Response at 27, despite the fact that the ’667 patent itself recognizes
`
`the potential inclusion of an HLR, see Ex. 1001 at 3:4–5 (“home location
`
`register”)), Johansson also discloses that the indicator may be stored in other
`
`system nodes. Ex. 1003 at 11:42–50; see also Pet. at 35–36. Indeed, just like in
`
`the ’667 patent (Ex. 1001 at 4:28–34), “[w]hen placed in the mobile station . . .
`
`[t]he mobile locating node MPC checks the indicating state of the indicator I, by
`
`sending a query to the mobile station MS regarding permission to locate the
`
`12
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`Case IPR2015-01714
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`whereabouts of a mobile station.” Ex. 1003 at 11:51–58. Patent Owner’s reliance
`
`on just one option disclosed in Johansson—where at least one other option
`
`operates just like an embodiment in the ’667 patent that operates “without pre-
`
`registering”—is fatal to its argument.
`
`Third, Patent Owner fails to provide any explanation as to how Johansson’s
`
`indicator is any different than the privacy checks disclosed in the ’667 patent as not
`
`being commensurate with the “without pre-registering” recitation. The indicator in
`
`Johansson simply indicates whether a user grants or denies permission for a
`
`device’s location to be determined. Ex. 1003 at 5:1–4; see also Ex. 2002 at ¶ 69
`
`(Patent Owner’s expert representing that “safeguard[ing] the privacy of mobile
`
`users . . . is at the heart of Johansson’s developments”). This is no different than
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`the privacy checks repeatedly disclosed in the ’667 patent as not being
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`commensurate with the “without pre-registering” recitation. See, e.g., Ex. 1001 at
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`2:10–13 (“[a] check may be carried out to determine whether the other mobile
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`station permits data concerning its location to be sent to others in order to provide
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`privacy, if required”), 2:29–32 (“the invention includes inhibiting data from the
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`third party application being sent, in response to a privacy request from said at
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`least one mobile station”), 4:28–34 (“SMSC 10 sends a request 23 to the PLMN 1
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`that is routed to mobile station MS2 as request 24 . . . in order to determine
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`whether the user of MS2 is content to allow its positional information to be
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`U.S. Patent No. 7,072,667
`communicated to others. If MS2 is happy to release this information, a response
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`25 is sent . . . .”), 4:54–56 (“MS2 sends message 31 indicating that it is not
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`prepared to release its positional information to others”), 5:32–33 (“privacy is
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`assured for individual users who do not wish to release their location information
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`to others”), 6:24–28 (“MS1 does not wish to receive promotional information from
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`third party application 15, MS1 may provide a privacy request message to the
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`server 11, in order to block the sending of promotional or like messages to it from
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`server 15”).
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`The privacy check features disclosed by the ’667 patent are separate from
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`the pre-registration aspects of the patent. Indeed, Patent Owner’s expert
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`acknowledged that “the ’667 patent describe[s] that the privacy check can be
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`performed in the context of a system where there is no preregistration.” Ex. 1012
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`at 26:13–17; see also id. at 38:20–25. In other words, in the context of the ’667
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`patent, a check as to whether a user or device wishes to share its information can
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`be performed by the disclosed and claimed system when no pre-registration for a
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`location finding service of the mobile station is made. This is no different than the
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`use of the indicator “I” in Johansson’s disclosed system, which also provides
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`privacy features to indicate whether a user grants or denies permission for a
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`device’s location to be determined. Just like in the ’667 patent, use of such a
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`privacy check feature does not mean there is a requirement to pre-register for the
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`location finding service.
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`Fourth, Patent Owner fails to explain how the privacy indicator in Johansson
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`shows that the requesting device has pre-registered for a location finding service.
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`In addition, such an indicator does not involve any subscribing with a vending
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`service to become a member of a group of friends (i.e., other users a user wishes to
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`be able to locate), as the Board found is required of the ’667 patent’s location
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`finding service registration. Google Inc. v. Core Wireless Licensing S.A.R.L.,
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`IPR2015-01715, Paper No. 8 at 13 (Feb. 18, 2016); Ex. 1001 at 1:30–48, 5:24–30.
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`3.
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`The “Without Pre-registering” Recitation is a Negative
`Limitation
`As explained above and in the Petition, Johansson expressly discloses the
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`“without pre-registering” recitations of claims 12 and 13. See, e.g., Pet. at 48, 51.
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`As such, Patent Owner’s arguments as to the status of this phrase as a negative
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`limitation are irrelevant to the proceeding at hand. In any event, however, even if
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`Johansson were found to be silent, Patent Owner admits that a negative limitation
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`may be “satisfied by silence in the prior art.” Response at 32. The “without pre-
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`registering” recitations of claims 12 and 13 are negative limitations, as previously
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`recognized by the Board. See Google, IPR2015-01715, Paper No. 8 at 14. As
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`such, because nothing in Johansson requires a mobile device (e.g., mobile station
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`MS or second party A2 as modified by Boss) register with a location finding
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`service prior to a request for location finding information, Johansson discloses the
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`“without pre-registering” recitations. See Palo Alto Networks, Inc. v. Juniper
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`Networks, Inc., IPR2013-00466, Paper No. 17 at 18 (Jan. 28, 2014) (“[A] negative
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`limitation requiring the absence of an element may be adequately described by a
`
`cited prior art reference if that reference does not otherwise require the presence of
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`the element recited in the negative limitation.”); see also Süd-Chemi, Inc. v.
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`Multisorb Techs., Inc., 554 F.3d 1001, 1005 (Fed. Cir. 2009) (explaining that a
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`prior art reference may adequately describe a negative limitation if the reference
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`does not otherwise require the feature to which the negative limitation is directed);
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`Upsher-Smith Labs, Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir. 2005);
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`CLIO USA, Inc. v. The Procter and Gamble Company, IPR2013-00448, Paper No.
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`15 at 3 (Feb. 4, 2014).
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`Patent Owner attempts to distinguish the above-cited case law by arguing
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`that “‘without pre-registering the mobile station for the location finding service’ is
`
`not a negative limitation” because “the claim requires that the method be
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`performed under the specified (positive) condition of not pre-registering the mobile
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`station for the location finding service.” Response at 32–33. This tautology
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`should be rejected. By its very terms, the claims only define what is not performed
`
`(i.e., “without pre-registering”); the claims, however, do not define what is
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`performed (e.g., how to achieve a system/method that does not require such pre-
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`registering). See also Palo Alto Networks, IPR2013-00466, Paper No. 17 at 18
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`(“[B]ecause dependent claim 6 requires detecting an absence of a keep-alive
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`signal, it may be understood to encompass a negative limitation.”) (emphasis
`
`added). Tellingly, while Patent Owner explains that “[a] particular failing of the
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`prior art was the need for such pre-registering,” (Response at 33), the ’667 patent is
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`entirely silent as to how it avoids its nebulous concept of pre-registration. See,
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`e.g., Ex. 1001 at 1:65–2:2, 5:24–27, 6:31–35. Thus, not only do the claims fail to
`
`define what is performed, the specification also fails to define what is performed.
`
`C. The Combination of Johansson and Boss Discloses “Location
`Finding Information Based On the Cell Occupied By at Least One
`Mobile Station”
`
`Patent Owner argues that “because the claims do not recite the selection of a
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`switching center based on a cell occupied by a mobile station,” the combination of
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`Johansson and Boss cannot render obvious the claims. Response at 35. As the
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`Board previously recognized, however, Patent Owner incorrectly represents
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`Petitioners’ analysis. In particular, “Petitioners . . . do