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 IPR2015-01715
`Patent No. 7,072,667
`____________________
`
`PETITIONER’S REPLY BRIEF
`
`

`
`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`C.
`
`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 “Data” is Irrelevant .............................. 6
`Patent Owner’s Discussion of the “Based on the Cell Occupied
`by at Least One Mobile Station” Limitation is Irrelevant .................... 6
`III. Claim 1 and its Dependent Claims Are Not Patentable over Staack’s
`Figure 2 Embodiment ..................................................................................... 7
`Staack Discloses the “Data Store” Limitation ..................................... 7
`A.
`Staack Discloses the “Without Pre-registering” Recitation ................. 9
`B.
`IV. Claims 10 and 11 Are Not Patentable over Staack’s Figure 2
`Embodiment .................................................................................................. 13
`Claims 12–14 Are Not Patentable over Staack’s Figure 2 Embodiment ..... 13
`V.
`VI. Claim 1 and its Dependent Claims Are Not Patentable over Staack’s
`Figure 7 Embodiment ................................................................................... 14
`A.
`The “Without Pre-registering” Recitation is a Negative
`Limitation ........................................................................................... 14
`Staack Discloses the “Without Pre-registering” Recitation ............... 16
`B.
`VII. Claim 2 is Not Separately Patentable over Staack’s Figure 7
`Embodiment .................................................................................................. 19
`VIII. Claims 10–14 Are Not Patentable over Staack’s Figure 7 Embodiment ..... 19
`IX. Claims 5–7 and 15 Are Not Patentable over Staack and Reed ..................... 19
`Claim 4 is Not Patentable over Staack and Johansson ................................ 21
`X.
`XI. Patent Owner’s Expert Should Be Accorded Little Weight ......................... 23
`XII. Conclusion .................................................................................................... 24
`Certificate of Compliance
`Certificate of Service
`
`i
`
`

`
`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Arthrocare Corp. v. Smith & Nephew, Inc.,
`406 F.3d 1365 (Fed. Cir. 2005) .............................................................. 11, 16, 17
`
`BlackBerry Corp. v. Zipit Wireless, Inc.,
`IPR2014-01507, Paper No. 50 (Mar. 29, 2016) ........................................... 23, 24
`
`CLIO USA, Inc. v. The Procter and Gamble Company,
`IPR2013-00448, Paper No. 15 (Feb. 4, 2014) .................................................... 15
`
`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.,
`IPR2015-01714, Paper No. 8 (Feb. 18, 2016) .................................................... 21
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR2013-00466, Paper No. 17 (Jan. 28, 2014) ............................................. 14, 15
`
`Süd-Chemi, Inc. v. Multisorb Techs., Inc.,
`554 F.3d 1001 (Fed. Cir. 2009) .......................................................................... 14
`
`Upsher-Smith Labs, Inc. v. Pamlab, L.L.C.,
`412 F.3d 1319 (Fed. Cir. 2005) .......................................................................... 15
`
`Regulations
`
`37 C.F.R. § 1.75(c) ..................................................................................................... 3
`
`
`
`ii
`
`

`
`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`
`LIST OF EXHIBITS
`
`1003
`
`1006
`1007
`
`1011
`
`Exhibit
`No.
`1001 U.S. Patent No. 7,072,667 (“the ’667 patent”)
`1002
`File History of U.S. Patent No7,072,667 (U.S. Patent
`Application No. 10/029,940 (“the ’940 application”))
`PCT Publication No. WO 00/36430 to Staack et al.
`(“Staack”)
`1004 U.S. Patent No. U.S. Patent No. 6,275,707 to Reed et al.
`(“Reed”)
`1005 U.S. Patent No. 6,442,391 to Johansson et al.
`(“Johansson”)
`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”)
`
`Previously
`Submitted
`X
`X
`
`X
`X
`
`X
`
`X
`X
`
`X
`X
`X
`
`X
`
`
`
`
`
`
`Description
`
`
`
`iii
`
`

`
`Case IPR2015-01715
`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 1–15 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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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`Response at 20. 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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`Case IPR2015-01715
`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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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`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 19–20. 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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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`service provider.” Response at 19 (citing Ex. 1002 at 33, 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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`Case IPR2015-01715
`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.
`
`Patent Owner’s Discussion of “Data” is Irrelevant
`
`B.
`Patent Owner argues that, “in claim 1 it is the ‘data’ that corresponds to the
`
`location finding information, not the data store.” Response at 21. This is
`
`consistent with the understanding of claim 1 applied by Petitioners. See, e.g., Pet.
`
`at 21–23. As such, Patent Owner’s proposed construction is irrelevant.
`
`C.
`
`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
`
`6
`
`

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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`mobile station.” Response at 21. 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 21–23.
`
`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 21–22), 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.
`
`III. Claim 1 and its Dependent Claims Are Not Patentable over Staack’s
`Figure 2 Embodiment
`Staack Discloses the “Data Store” Limitation
`A.
`Attempting to distinguish claim 1, Patent Owner incorrectly argues that
`
`“Staack’s Fig. 2 embodiment does not teach ‘sending the data [retrieved from the
`
`data store] through the network from the location message server as a message to
`
`the mobile station that requested the location finding information.’” Response at
`
`7
`
`

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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`23.1 As Petitioners explained, Staack discloses sending the data retrieved from
`
`database 35a through a GSM network from MLU 30 as a message to the mobile
`
`handset that requested location finding information. Pet. at 21–23. The Board
`
`agreed. Institution Decision at 7.
`
`According to Patent Owner, the only “‘data’ that is stored in the database
`
`35(a) is information as to whether or not, for the subject cell, timing advance and
`
`bearing data should be used to estimate the locations of mobile devices in that
`
`cell.” Response at 24. Moreover, according to Patent Owner, “the MLU of Staack
`
`sends the location of the mobile device, not the information it obtained from the
`
`data store 35a.” Id. Patent Owner is simply wrong and ignores that Staack
`
`discloses that “[t]he database 35a stores, for each cell, the geographic location of
`
`that cell’s base-station and an indication of, when a mobile station is in that cell,
`
`whether or not the mobile station’s timing advance should be used to estimate the
`
`mobile station’s location.” Ex. 1003 at 7:2–5 (emphasis added); Pet. at 21. “Then
`
`to estimate the location of a mobile station the MLU determines via the MSCs
`
`which cell the mobile is currently in. The MLU consults the information on that
`
`cell that is stored in the database 35a. If the database indicates that timing
`
`
`1 Patent Owner does not challenge this limitation for Staack’s Figure 7
`
`embodiment. See Response at 30–42.
`
`8
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`

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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`advance (and bearing data) should not be used to estimate the locations of mobiles
`
`in that cell then the MLU estimates the mobile station’s location to be the location
`
`of the base-station associated with that cell.” Ex. 1003 at 7:9–15 (emphases
`
`added). In other words, for situations where the database indicates that timing
`
`advance should not be used, the location of the mobile device that the MLU in
`
`Staack sends is obtained from database 35a (e.g., a “data store”). And as explained
`
`in the Petition, the mobile device location, which is determined in Staack based on
`
`the location of the base station associated with the mobile device’s cell, is the
`
`claimed “location finding information” under the BRI standard. See supra Section
`
`II.A; see also Pet. at 18–23.
`
`Staack Discloses the “Without Pre-registering” Recitation
`B.
`The Board previously recognized that “because there is no indication that
`
`pre-registration occurs in Staack,” Staack provides for the “without pre-
`
`registering” negative limitation. Institution Decision at 14; see also infra Section
`
`VI.A (explaining why the “without pre-registering” recitation is a negative
`
`limitation).
`
`Patent Owner argues that in “Staack’s Fig. 2 embodiment,” there is pre-
`
`registration because “it can be understood that the HLR, the subscriber database
`
`and the billing centre are modified so as to be accessible by the MLU, which is
`
`especially defined for providing the location services.” Response at 26.
`
`9
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`U.S. Patent No. 7,072,667
`According to Patent Owner, “the subscriber data or billing data is stored in the
`
`HLR, and the subscriber database or the billing centre is used by the location
`
`services.” Id. In reality, Staack’s description of the components in Figure 2 is no
`
`different than the ’667 patent. Patent Owner’s confused attempt to distinguish the
`
`two should be rejected.
`
`As the Board previously recognized, “[r]egistration of mobile station users,
`
`including identifying information of the users (such as phone numbers) or
`
`subscription information, with, for example, a home location register (HLR), as
`
`described in Staack, is not commensurate with registration for a location finding
`
`service, as recited in claim 1.” Institution Decision at 13. “The ’667 Specification
`
`acknowledges that mobile stations are registered with an HLR, and that this was
`
`well known in the art.” Id. (citing Ex. 1001 at 2:65–3:7); see also Ex. 1001 at
`
`2:65–3:7, 3:44–45 (explaining the mobile station sending the request is registered
`
`within a GSM network). Indeed, the ’667 patent does not equate “registration for
`
`basic services in a GSM network” with “pre-registration for the location service,”
`
`as suggested by Patent Owner (Response at 26), but rather explains that location
`
`finding service registration involves subscribing with a vending service, e.g.,
`
`FinderTM, to become a member of a group of friends. Ex. 1001 at 1:30–48, 5:24–
`
`30; see also Institution Decision at 5.
`
`10
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`Further, Patent Owner is incorrect in alleging that “Staack is recognizing
`
`that such an implementation [the Fig. 7 embodiment with the Fig. 2 embodiment]
`
`should not conflict with the pre-registration requirements of GSM 03.71.”
`
`Response at 27.
`
`First, Patent Owner makes two improper leaps in logic. While Staack’s
`
`Figure 7 embodiment “could be in accordance with GSM 03.71,” and could use the
`
`techniques described with respect to Figure 2 for determining “the location of [a]
`
`mobile station,” Ex. 1003 at 12:27–13:1 (emphases added), Staack does not
`
`disclose that its Figure 7 embodiment is necessarily implemented in accordance
`
`with GSM 03.71, nor that its Figure 2 embodiment is necessarily implemented in
`
`accordance with its Figure 7 embodiment. Patent Owner’s reliance on a “possible”
`
`implementation in Staack fails to overcome the evidence that Staack discloses the
`
`“without pre-registering” recitations. Arthrocare Corp. v. Smith & Nephew, Inc.,
`
`406 F.3d 1365, 1372 (Fed. Cir. 2005) (“[Patent Owner’s] argument fails because it
`
`addresses only a single embodiment in the [prior art] patent.”); see also infra
`
`Section VI.A) (a negative limitation like the “without pre-registering” recitation
`
`may be satisfied by silence in the prior art).
`
`Second, contrary to Patent Owner’s allegation, GSM 03.71 does not
`
`“require[] the mobile station to pre-register for the location services in order to
`
`make use of the location services.” Response at 27. Patent Owner points to certain
`
`11
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`

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`U.S. Patent No. 7,072,667
`“privacy classes” in the GSM standard (Ex. 2004 at 15; see also Ex. 2003 at 49),
`
`but fails to provide any explanation as to how these privacy classes in the GSM
`
`standard are a location finding service or are any different than the privacy checks
`
`disclosed in the ’667 patent as not being commensurate with the “without pre-
`
`registering” recitation.2 See, e.g., Ex. 1001 at 2:10–13 (“[a] check may be carried
`
`out to determine whether the other mobile station permits data concerning its
`
`location to be sent to others in order to provide privacy, if required”), 2:29–32,
`
`4:28–34, 4:54–56, 5:32–33, 6:24–28; see also Ex. 1012 at 26:13–17 (Patent
`
`Owner’s expert explaining “the ’667 patent describe[s] that the privacy check can
`
`be performed in the context of a system where there is no preregistration.”), 38:20–
`
`25. Indeed, the privacy check in the GSM standard does not involve any pre-
`
`registration with a location finding service in the context of the ’667 patent as it
`
`does not, for example, involve any subscribing with a vending service to become a
`
`member of a group of other users a user wishes to be able to locate. See Ex. 1001
`
`at 1:30–48, 5:24–30; see also id. at 2:67, 3:8, 3:23–25 (the ’667 patent system may
`
`operate within the “GSM network”); Institution Decision at 5. Thus, just like in
`
`
`2 Even in the context of the GSM standard, privacy settings may be overridden, for
`
`example, in “commercial, emergency, [or] law-enforcement” scenarios. See Ex.
`
`2003 at 31.
`
`12
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`

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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`the ’667 patent, use of privacy check features in a GSM network does not mean
`
`there is a requirement to pre-register for a location finding service.
`
`IV. Claims 10 and 11 Are Not Patentable over Staack’s Figure 2
`Embodiment
`
`Patent Owner does not present any arguments for claims 10 and 11 other
`
`than those discussed above for claim 1. Response at 28. As such, for the reasons
`
`discussed above and in the Petition, claims 10 and 11 are not patentable over
`
`Staack’s Figure 2 embodiment. See supra Section III; Petition at 32–41.
`
`V. Claims 12–14 Are Not Patentable over Staack’s Figure 2 Embodiment
`Patent Owner does not present any arguments for claims 12–14 other than
`
`those discussed above for claim 1. Response at 29. For example, Patent Owner
`
`argues “location finding information is not merely the geographic location of a
`
`mobile station,” while in Staack “it is only the location of the mobile station that is
`
`received from the MLU.” Id. As discussed above, the mobile device location is
`
`the claimed “location finding information” under the BRI standard. See supra
`
`Sections II.A, III.A; see also Pet. at 18–23, 41–45.
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`Also, contrary to Patent Owner’s allegation (Response at 29), Staack does
`
`disclose the “without pre-registering” recitations, as discussed above. See supra
`
`Section III.B; see also Pet. at 24–26, 41–45.
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`As such, for the reasons discussed above and in the Petition, claims 12–14
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`are not patentable over Staack’s Figure 2 embodiment.
`
`13
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`

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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`VI. Claim 1 and its Dependent Claims Are Not Patentable over Staack’s
`Figure 7 Embodiment
`As Petitioners previously explained, Staack’s Figure 7 embodiment discloses
`
`all of the features of claims 1–3, 8, and 9. Pet. at 17–32. With respect to
`
`independent claim 1, Patent Owner’s only arguments relate to the “without pre-
`
`registering” recitation. Response at 30–42. Patent Owner’s arguments are flawed
`
`and should be rejected.
`
`A. The “Without Pre-registering” Recitation is a Negative Limitation
`Patent Owner admits that a negative limitation may be “satisfied by silence
`
`in the prior art.” Response at 40. The “without pre-registering” recitations of
`
`claims 12 and 13 are negative limitations, as previously recognized by the Board.
`
`Institution Decision at 14. As such, because nothing in Staack requires a mobile
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`device register with a location finding service prior to a request for location finding
`
`information, Staack discloses the “without pre-registering” recitations. See Palo
`
`Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00466, Paper No. 17 at 18
`
`(Jan. 28, 2014) (“[A] negative 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 the element recited in the negative limitation.”);
`
`see also Süd-Chemi, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1005 (Fed. Cir.
`
`2009) (explaining that a prior art reference may adequately describe a negative
`
`limitation if the reference does not otherwise require the feature to which the
`
`14
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`

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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`negative limitation is directed); Upsher-Smith Labs, Inc. v. Pamlab, L.L.C., 412
`
`F.3d 1319, 1322 (Fed. Cir. 2005); CLIO USA, Inc. v. The Procter and Gamble
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`Company, IPR2013-00448, Paper No. 15 at 3 (Feb. 4, 2014).
`
`Patent Owner attempts to distinguish the above-cited case law by arguing
`
`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
`
`performed under the specified (positive) condition of not pre-registering the mobile
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`station for the location finding service.” Response at 40; see also id. at 31–34.
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`This tautology 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 performed (e.g., how to achieve a system/method that does not require such
`
`pre-registering). See also Palo Alto Networks, IPR2013-00466, Paper No. 17 at 18
`
`(“[B]ecause dependent claim 6 requires detecting an absence of a keep-alive
`
`signal, it may be understood to encompass a negative limitation.”) (emphasis
`
`added). Tellingly, while Patent Owner explains that “[a] particular failing of the
`
`prior art was the need for such pre-registering,” (Response at 33), the ’667 patent is
`
`entirely silent as to how it avoids its nebulous concept of pre-registration. See,
`
`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 to achieve “without pre-registering,” the specification
`
`also fails to define what is performed.
`
`15
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`

`
`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`Staack Discloses the “Without Pre-registering” Recitation
`B.
`The Board previously recognized that “because there is no indication that
`
`pre-registration occurs in Staack,” Staack provides for the “without pre-
`
`registering” negative limitation. Institution Decision at 14; see also supra Section
`
`VI.A (explaining why the “without pre-registering” recitation is a negative
`
`limitation).
`
`Patent Owner argues that “Staack does explicitly disclose that pre-
`
`registration is required for the location-based services,” relying on its mention of
`
`GSM 03.71 discussed above. Response at 35; see also supra Section III.B. As
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`discussed above, Staack’s reliance on the GSM standard (with its disclosed privacy
`
`checks) is no different than the ’667 patent’s reliance on the GSM standard (and its
`
`disclosed privacy checks). See supra Section III.B. And, in any event, Staack’s
`
`Figure 7 embodiment merely “could be in accordance with GSM 03.71.” Ex. 1003
`
`at 12:27–13:1 (emphasis added). Nothing in Staack requires use of GSM 03.71
`
`and, as such, nothing in Staack requires pre-registration even if Patent Owner’s
`
`alleged distinction had merit (and it does not). Thus, Staack would still anticipate
`
`the claims. See Arthrocare, 406 F.3d at 1372; see also supra Section VI.A.
`
`Patent Owner further argues that in Staack, “the WTA server could be
`
`capable of consulting [a list correlating user names and phone numbers or other
`
`identities] stored elsewhere, for example at a global name server or HLR,”
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`16
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`

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`Case IPR2015-01715
`U.S. Patent No. 7,072,667
`(Response at 37), that, “[a] person of ordinary skill in the art would understood
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`[sic] that, in the latter case, the HLR needs to be modified to allow such a list to be
`
`used by the WTA server (other than a conventional GSM network element) for the
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`location service,” (id. at 37–38), and still further that “[s]uch a list stored in the
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`HLR is a pre-registration for the location service and not merely registration for
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`basic services in a GSM network” (id. at 38). These assertions by Patent Owner
`
`must fail. For one, even under Patent Owner’s interpretation of Staack, there
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`would only be pre-registration in one contrived scenario and so, as noted above,
`
`even if Patent Owner’s alleged distinction had merit (and it does not), the alleged
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`pre-registration would not be required by Staack’s other embodiments that would
`
`still anticipate the claims. See Arthrocare, 406 F.3d at 1372; see also supra
`
`Section VI.A) (a negative limitation like the “without pre-registering” recitation
`
`may be satisfied by silence in the prior art).
`
`Additionally, as the Board previously recognized, “[r]egistration of mobile
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`station users, including identifying information of the users (such as phone
`
`numbers) or subscription information, with, for example, a home location register
`
`(HLR