Paper No. __
`Filed: August 11, 2015
`
`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
`
`____________________
`
`Patent No. 7,072,667
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,072,667
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`TABLE OF CONTENTS
`
`
`Introduction ..................................................................................................... 1
`I.
`II. Mandatory Notices Under 37 C.F.R. § 42.8 ................................................... 1
`A.
`Real Party-in-Interest ........................................................................... 1
`B.
`Related Matters ..................................................................................... 1
`C.
`Lead and Back-Up Counsel .................................................................. 2
`Payment Of Fees Under 37 C.F.R. § 42.15(a)................................................ 2
`III.
`IV. Grounds For Standing ..................................................................................... 2
`V.
`Precise Relief Requested For Each Claim Challenged .................................. 3
`A.
`Claims for which Review is Requested ............................................... 3
`B.
`Statutory Grounds of Challenge ........................................................... 3
`C.
`The Proposed Grounds are Not Redundant .......................................... 4
`VI. The ’667 Patent ............................................................................................... 5
`A. Overview of the ’667 Patent ................................................................. 5
`B.
`The ’667 Patent Prosecution History ................................................... 6
`VII. Claim Construction ......................................................................................... 7
`A.
`“location message server” .................................................................... 8
`B.
`“without pre-registering the mobile station [for / with] the
`location finding service” ...................................................................... 9
`C. Means-Plus-Function Claim Terms ................................................... 12
`D.
`Remaining Terms and Phrases ........................................................... 16
`VIII. Detailed Explanation of Grounds For Unpatentability Under The
`Broadest Reasonable Construction ............................................................... 17
`A. Ground 1: Staack Anticipates Claims 1-3 and 8-14 ........................... 17
`1.
`Claim 1 ..................................................................................... 17
`2.
`Claim 2 ..................................................................................... 26
`3.
`Claim 3 ..................................................................................... 28
`4.
`Claim 8 ..................................................................................... 30
`5.
`Claim 9 ..................................................................................... 31
`-i-
`
`
`
`
`
`
`

`
`B.
`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`6.
`Claim 10 ................................................................................... 32
`Claim 11 ................................................................................... 38
`7.
`Claim 12 ................................................................................... 41
`8.
`Claim 13 ................................................................................... 42
`9.
`10. Claim 14 ................................................................................... 45
`Ground 2: Staack and Reed Render Claims 5, 6, 7, and 15
`Obvious .............................................................................................. 46
`1.
`Claim 5 ..................................................................................... 46
`2.
`Claim 6 ..................................................................................... 48
`3.
`Claim 7 ..................................................................................... 50
`4.
`Claim 15 ................................................................................... 52
`Ground 3: Staack and Johansson Render Claim 4 Obvious .............. 55
`1.
`Claim 4 ..................................................................................... 55
`IX. Conclusion .................................................................................................... 60
`Certificate of Service
`
`C.
`
`
`
`
`
`-ii-
`
`
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`CLIO USA, Inc. v. The Procter and Gamble Company,
`IPR2013-00448, Paper No. 15 (Feb. 4, 2014) .................................................... 24
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper No. 15 (Jan. 9, 2013) ..................................................... 10
`
`Gracenote, Inc. v. Iceberg Indus., LLC,
`IPR2013-00551, Paper No. 6 (Feb. 28, 2014) .................................................... 13
`
`IPXL Holdings, LLC v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005) .......................................................................... 16
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093, Paper No. 28 (Apr. 29, 2013) .................................................. 10
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR2013-00466, Paper No. 17 (Jan. 28, 2014) ................................................... 24
`
`Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 U.S. App.
`LEXIS 10082 (Fed. Cir. June 16, 2015) ............................................................. 13
`
`Statutes
`
`35 U.S.C. § 102(b) ................................................................................................. 3, 4
`
`35 U.S.C. § 102(e) ..................................................................................................... 4
`
`35 U.S.C. § 103(a) ................................................................................................. 3, 4
`
`35 U.S.C. § 112 ............................................................................................ 12, 13, 14
`
`35 U.S.C. § 311(b) ................................................................................................... 12
`
`
`
`
`
`-iii-
`
`
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`Regulations
`
`37 C.F.R. § 42.8 ..................................................................................................... 1, 2
`
`37 C.F.R. § 42.15 ....................................................................................................... 2
`
`37 C.F.R. § 42.100 ..................................................................................................... 7
`
`37 C.F.R. § 42.104 ..................................................................................................... 2
`
`
`
`
`
`
`
`-iv-
`
`
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 7,072,667 (“the ’667 patent”)
`
`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”)
`
`U.S. Patent No. U.S. Patent No. 6,275,707 to Reed et al. (“Reed”)
`
`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
`
`Declaration of Dr. Chris G. Bartone
`
`Excerpt From Webster’s II Dictionary, 2001
`
`Joint Claim Construction and Prehearing Statement, Core 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)
`
`
`
`-v-
`
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`I.
`
`INTRODUCTION
`
`Google Inc. and LG Electronics, Inc. (collectively, “Petitioners”) request
`
`inter partes review of claims 1-15 of U.S. Patent No. 7,072,667 (“the ’667 patent”)
`
`(Ex. 1001). This Petition shows, by a preponderance of the evidence, that there is a
`
`reasonable likelihood that Petitioners will prevail on claims 1-15 of the ’667 patent
`
`based on prior art that the U.S. Patent and Trademark Office (“PTO”) did not have
`
`before it during prosecution, and that renders obvious the claims of the ’667 patent.
`
`Claims 1-15 of the ’667 patent should be found unpatentable and canceled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party-in-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioners identify Google Inc., LG
`
`Electronics, Inc., and LG Electronics MobileComm USA, Inc. as the real parties-
`
`in-interest.
`
`B. Related Matters
`In accordance with 37 C.F.R. § 42.8(b)(2), Petitioners identify the following
`
`related matters. The Patent Owner asserted the ’667 patent against Apple Inc. in a
`
`patent litigation filed on September 10, 2014, in the Eastern District of Texas (case
`
`no. 6:14-cv-00751), which remains pending. The Patent Owner also asserted the
`
`’667 patent against LG Electronics, Inc. and LG Electronics MobileComm USA,
`
`Inc. in a patent litigation filed on September 26, 2014, in the Eastern District of
`
`Texas (case no. 2:14-cv-00911), which has been consolidated with case no. 2:14-
`1
`
`
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`cv-00912, and remains pending. As explained below, Petitioner is also filing a
`
`second petition against the ’667 patent.
`
`C. Lead and Back-Up Counsel
`In accordance with 37 C.F.R. §§ 42.8(b)(3)-(4), Petitioners identify the
`
`following lead and back-up counsel and service information. Lead counsel is
`
`Naveen Modi (Reg. No. 46,224), Paul Hastings LLP, 875 15th Street NW,
`
`Washington, DC 20005, Telephone: (202) 551-1700, Fax: (202) 551-1705, E-mail:
`
`Google_LG-CoreWireless-IPR@paulhastings.com; and Backup counsel is (1)
`
`Joseph E. Palys (Reg. No. 46,508), Paul Hastings LLP, 875 15th Street NW,
`
`Washington, DC 20005, Telephone: (202) 551-1700, Fax: (202) 551-1705, E-mail:
`
`Google_LG-CoreWireless-IPR@paulhastings.com, and (2) Daniel Zeilberger
`
`(Reg. No. 65,349), Paul Hastings LLP, 875 15th Street NW, Washington, DC
`
`20005, Telephone: (202) 551-1700, Fax: (202) 551-1705, E-mail: Google_LG-
`
`CoreWireless-IPR@paulhastings.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(a)
`The required fees are submitted herewith. The PTO is authorized to charge
`
`any additional fees due at any time during this proceeding to Deposit Account No.
`
`50-2613.
`
`IV. GROUNDS FOR STANDING
`Petitioners certify that, under 37 C.F.R. § 42.104(a), the ’667 patent is
`
`available for inter partes review, and that Petitioners are not barred or estopped
`2
`
`
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`from requesting inter partes review of the ’667 patent.
`
`V.
`
`PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED
`A. Claims for which Review is Requested
`Petitioners respectfully request review of claims 1-15 of the ’667 patent, and
`
`cancellation of these claims as unpatentable.
`
`Statutory Grounds of Challenge
`
`B.
`Claims 1-15 should be cancelled as unpatentable on the following grounds:
`
`Ground 1: Claims 1-3 and 8-14 are anticipated under pre-AIA 35 U.S.C. § 102(b)
`
`over PCT Publication No. WO 00/36430 to Staack et al. (“Staack”) (Ex.
`
`1003);
`
`Ground 2: Claims 5, 6, 7, and 15 are obvious under pre-AIA 35 U.S.C. § 103(a)
`
`over Staack in view of U.S. Patent No. 6,275,707 to Reed et al. (“Reed”)
`
`(Ex. 1004); and
`
`Ground 3: Claim 4 is obvious under pre-AIA 35 U.S.C. § 103(a) over Staack in
`
`view of U.S. Patent No. 6,442,391 to Johansson et al. (“Johansson”) (Ex.
`
`1005).
`
`For purposes of this proceeding, the effective date of the ’667 patent is
`
`considered to be December 31, 2001, the filing date of the ’667 patent. Staack was
`
`published on June 22, 2000, and is thus prior art at least under pre-AIA 35 U.S.C. §
`
`102(b). Reed was filed on October 8, 1999, and is prior art at least under pre-AIA
`
`
`
`3
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`35 U.S.C. § 102(e). Johansson was filed on May 11, 1998, and thus is prior art at
`
`least under pre-AIA 35 U.S.C. § 102(e).
`
`C. The Proposed Grounds are Not Redundant
`Petitioners are filing a second IPR petition concurrent with this petition.
`
`However, Petitioners’ proposed grounds for institution in the two petitions are not
`
`redundant because there are several significant differences between the grounds.
`
`For example, the primary reference in the other petition, Johansson, is available as
`
`prior art under Section 102(e), which is a different statutory basis than the primary
`
`reference applied in this petition, Staack, which is prior art under Section 102(b).
`
`Therefore, Patent Owner may be entitled to different defenses for each of the
`
`references. Moreover, whereas Johansson is being applied in a rejection under
`
`Section 103(a) for all claims, for example, Staack is being applied in this petition
`
`as an anticipatory reference under Section 102(b) for claims 1-3 and 8-14.
`
`Therefore, Patent Owner may also be entitled to different defenses for each of the
`
`rejections in the two petitions, such as secondary considerations regarding the
`
`Section 103 positions, prior conception, etc. In addition, while Johansson discloses
`
`the “without pre-registering” claim limitations explicitly, Staack discloses these
`
`limitations implicitly. These differences demonstrate examples of the strengths and
`
`weakness of the prior art identified in each of the grounds with respect to the
`
`challenged claims. Therefore, at least for these reasons, Petitioners respectfully
`
`
`
`4
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`request the Board adopt all proposed Grounds in this petition and in the other
`
`petition, particularly because not adopting one of the grounds may potentially
`
`affect how Petitioners may later challenge the validity of the ’667 patent.
`
`VI. THE ’667 PATENT
`A. Overview of the ’667 Patent
`The ’667 patent, entitled “Location Information Service for a Cellular
`
`Telecommunications Network,” issued on July 4, 2006, from U.S. Application No.
`
`10/029,940, which was filed on December 31, 2001. (Ex. 1001.) The purported
`
`goal of the ’667 patent is to provide “location information service for mobile
`
`stations in a cellular telecommunications network . . . without requiring pre-
`
`registration of the subscriber that uses the mobile station.” (Ex. 1001 at 1:52-65.)
`
`The ’667 patent includes four independent claims, claims 1, 10, 12, and 13.1 The
`
`features recited in claims 1-15, alone or in combination, characterize a
`
`conventional process used in many location-based systems available at the time of
`
`the alleged invention, and therefore are unpatentable. (See Ex. 1008 at ¶¶ 12-16.)
`
`
`1 Claims 8 and 9 refer to independent claim 1, but do so in an ambiguous manner
`
`that suggests they are independent claims. Regardless of whether claims 8 and 9
`
`are dependent or independent claims, the prior art, and proposed grounds applying
`
`the prior art, disclose the limitations of these claims and its dependent claims.
`
`
`
`5
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`The ’667 Patent Prosecution History
`
`B.
`The ’667 patent issued on July 4, 2006 from U.S. patent application no.
`
`10/029,940 (“the ’940 application”) filed on December 31, 2001. During
`
`prosecution, and in response to an initial office action rejecting then pending
`
`claims 1-15, the applicant for the ’940 application amended independent claims 1,
`
`8, 12, and 13 to specify that the request for location information was for “location
`
`finding information” and to specify that the claimed location information service
`
`was a “location finding service.” (Ex. 1002 at 33, 35.) In its remarks, the applicant
`
`attempted to distinguish the prior art because it allegedly did not disclose the
`
`combination of features such as a location finding service in conjunction with a
`
`request for location finding information, and sending data through a network from
`
`a location message server as a message to a mobile station that requested the
`
`location finding information. The applicant also argued that the cited prior art did
`
`not disclose the claimed without pre-registration limitations. (Id. at 38-42.)
`
`However, as explained below, such features were neither novel or nonobvious as
`
`demonstrated by the prior art at-issue in this proceeding.
`
`In addition, during prosecution of the ’667 patent, a PCT application was
`
`filed, WO 03/056853 (“the ’853 PCT”) (Ex. 1006) claiming priority to the ’667
`
`patent. (Ex. 1006 at 1.) The ’853 PCT included claims nearly identical to those of
`
`the ’667 patent. (Compare Ex. 1001 at claims 12-15, with Ex. 1006 at claims 12-
`
`
`
`6
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`15; see also Ex. 1006, claims 1-11, 16-19.) Notably, the European Patent Office
`
`(“EPO”) identified prior art reference Johansson (Ex. 1005) to the applicant for the
`
`’853 PCT. The EPO repeatedly found that the pending independent claims of the
`
`’853 PCT application were “entirely anticipated” by Johansson, and that the
`
`dependent claims “appear[ed] to add nothing of inventive significance.” (Ex. 1007
`
`at 37-38, 42-43, 48-49, 52-53, 66-67.) Each of these notifications occurred before
`
`the ’667 patent issued, and in fact before the PTO issued its first rejection during
`
`prosecution of the ’940 application. (Compare Ex. 1002 at 46-58 (First Office
`
`Action dated April 8, 2005), with Ex. 1007 at 33, 41, 47, 64.) The PTO was never
`
`informed of the statement regarding Johansson, the office actions from the EPO, or
`
`even Johansson itself during prosecution of the ’667 patent. The ’667 patent
`
`ultimately issued without Johansson being considered. (See Ex. 1001 at 1,
`
`“References Cited”.)
`
`VII. CLAIM CONSTRUCTION
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.100(b). Throughout this Petition, as required by the rules governing it,
`
`Petitioners apply the broadest reasonable interpretation (BRI) of claim terms
`
`appropriate for these proceedings, including claim terms for which a claim
`
`construction is not explicitly discussed. Claim constructions appropriate for these
`
`
`
`7
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`proceedings may be different than claim constructions appropriate in a federal
`
`district court. Thus, claim constructions relied upon in this Petition do not
`
`necessarily reflect the claim constructions that Petitioners believe should be
`
`adopted by a district court.
`
`“location message server”
`
`A.
`Claims 1, 12, and 13 recite the term “location message server.” (Ex. 1001 at
`
`6:42-43, 6:47-48, 8:5-7, 8:19-21.) The broadest reasonable interpretation of a
`
`“location message server,” as claimed, is “a server that generates location finding
`
`information.” This broadest reasonable interpretation is consistent with the
`
`language of the claims and the disclosure of the server in the specification, and the
`
`understanding of a person of ordinary skill in the art.2 For instance, claim 1 recites
`
`that a request for location finding information be sent to a location message server,
`
`and that data corresponding to the location finding information be sent from the
`
`location message server. (Ex. 1001 at 6:40-42, 6:46-47.) Claims 12 and 13 recite
`
`similar features. (Id. at 8:4-23.) And while the ’667 patent specification does not
`
`
`2 A person of ordinary skill in the art would have had an undergraduate degree in
`
`electrical engineering, physics, or equivalent and a minimum of two years of
`
`professional experience in the relevant field of wireless telecommunications,
`
`including wireless location systems. (Ex. 1008 at ¶¶ 10-11, 18; see also id., ¶¶ 1-7.)
`
`
`
`8
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`define the term “location message server,” it does refer to a “location messaging
`
`server 11,” which is described as generating location finding information. (See,
`
`e.g., id. at 3:36-40, 3:49-52, 4:8-14, 4:35-39.) Therefore, the broadest reasonable
`
`interpretation of a “location message server” is “a server that generates location
`
`finding information.”
`
`B.
`
`“without pre-registering the mobile station [for / with] the
`location finding service”
`
`Claims 1, 10, 12, and 13 also recite that “without pre-registering the mobile
`
`station [for / with] the location finding service.” The broadest reasonable
`
`interpretation of this limitation is “without recording that a mobile station can take
`
`part in a location finding service prior to a request for location finding
`
`information.” This understanding is consistent with the language of the claims and
`
`the use of the term in the ’667 patent. For instance, by requiring a “pre”
`
`registration, the claims promote a temporal or reference-based requirement relative
`
`to something in the claims. In this case, claims 1, 10, and 12 require that the
`
`claimed method (e.g., the “sending,” “retrieving,” and “sending” steps of claim 1)
`
`be performed without “pre-registering the mobile station for the location finding
`
`service.” Similarly, claim 13 requires that the mobile station comprise circuitry that
`
`sends a request for location finding information and circuitry to receive a message
`
`containing location finding information such that the “provision” of such
`
`information is made without pre-registering. As such, the temporal aspect
`
`
`
`9
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`associated with the registration aspect of the term is in relation to “sending a
`
`request for location finding information from a mobile station” in claim 1. The
`
`specification also discloses the notion that pre-registering for a location
`
`information service takes place prior to any request to use such a service being
`
`provided. (See e.g., Ex. 1001 at 1:46-48, 1:66-2:5, 5:28-30, 6:31-35.)
`
`Additionally, the prosecution history is part of the intrinsic record and
`
`should be considered when construing the claims. See, e.g., Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 15 at 8 (Jan. 9, 2013);
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC, IPR2013-00093, Paper
`
`No. 28 at 10 (Apr. 29, 2013). Here, in an attempt to distinguish prior art, the
`
`applicant distinguished functions that occurred “at the time of the request” from
`
`functions that would reflect a “pre-registration limitation.” (See Ex. 1002 at 41
`
`(“[a]ll occurs at the time of the request which is the antithesis of the claimed pre-
`
`registration limitation.”) Such representations should be considered by the Board in
`
`construing this term.
`
`Accordingly, the broadest reasonable interpretation of the “pre-registering”
`
`aspect of the term is “prior to the mobile station sending a request for location
`
`finding information,” which provides a relevant relationship to aspects of claims 1,
`
`10, 12, and 13 (Ex. 1001 at claims 1, 10, 12 (“sending a request for location
`
`finding information”), and 13 (“circuitry operable to send a request for location
`
`
`
`10
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`finding information”)), as proposed by Petitioners.
`
`The other aspect regarding interpretation of this term relates to “without . . .
`
`registering.” The claims expressly require that the “without . . . registering” is in
`
`connection with the mobile station for the location finding service. The patent does
`
`not define what is meant to register (or not to register) a mobile station for a
`
`location finding service, only that such registering is not required. (See Ex. 1001 at
`
`1:45-47 (describing prior art pre-registration in connection with members of a
`
`locating finding group), 1:65-2:2 (describing in the “Summary of the Invention”
`
`section of the patent that “in accordance with the present invention, 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”), 5:24-
`
`27 (“there is no need to pre-register with the location service that may be provided
`
`free of charge by the network operator, or at the usual tariff for SMS messages”).)
`
`Similarly, the patent states, “the system described with reference to FIG. 7, there is
`
`no need to pre-register with the location service . . . [b]oth the location service and
`
`the third party applications may be provided free of charge, or at the usual tariff for
`
`SMS message.” (Id. at 6:31-35.) However, in the context of the ’667 patent’s
`
`specification and claims, and as the term “register” was known to those skilled in
`
`the art at the time of the alleged invention (see Ex. 1008 at ¶ 19; Ex. 1009 at 3), the
`
`broadest reasonable interpretation of the “without . . . registering” aspects of the
`
`
`
`11
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`term is “without recording that a mobile station can take part in a location finding
`
`service.” This understanding is consistent with the requirements in the claims and
`
`specification that pre-registering the mobile station is “for” or “with” the location
`
`finding service, and thus reflects that the station is able to take part in services
`
`from such a service. (See e.g., Ex. 1001 at 6:50-51, 8:25-26.)
`
`Accordingly, for the reasons set forth above, the claims, specification, and
`
`file history support that the broadest reasonable interpretation of the claimed
`
`“without pre-registering the mobile station for the location finding service” is
`
`“without recording that a mobile station can take part in a location finding service
`
`prior to a request for location finding information.”
`
`C. Means-Plus-Function Claim Terms
`Below Petitioner addresses means-plus-function claim terms recited in the
`
`claims. While Petitioner does not believe the ’667 discloses the structure
`
`corresponding to the claimed function of each of the below-identified means-plus-
`
`function claim terms, given the requirements of 37 C.F.R. § 104(b)(3) and that
`
`such deficiencies cannot be raised in this proceeding (see 35 U.S.C. § 311(b)),
`
`Petitioner identifies portions of the ’667 patent that Patent Owner may argue
`
`describe such “structure.” In doing so, Petition does not concede that any claim of
`
`the ’667 patent is valid under 35 U.S.C. § 112.
`
`Claim 13 recites a “circuitry operable to send a request for location finding
`
`
`
`12
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`information from a mobile station as a message 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.” (Ex. 1001 at 8:17-23.) Claim 15 recites
`
`“circuitry operable to send the received message to another mobile station.” (Id. at
`
`8:30-32.)
`
`“When a claim term lacks the word ‘means,’ the presumption [that § 112,
`
`para. 6 does not apply] can be overcome and § 112, para. 6 will apply if the
`
`challenger demonstrates that the claim term fails to ‘recite sufficiently definite
`
`structure’ or else recites ‘function without reciting sufficient structure for
`
`performing that function.’” Williamson v. Citrix Online, LLC, No. 2013-1130,
`
`2015 U.S. App. LEXIS 10082 at *16 (Fed. Cir. June 16, 2015) (citing Watts v. XL
`
`Sys., 232 F.3d 877, 880 (Fed. Cir. 2000)). Once a term is determined to be a
`
`means-plus-function claim term, the next tasks are to first identify the function
`
`recited in the claim term, and then consult the written description of the to identify
`
`the corresponding structure that performs the identified function and equivalents
`
`thereof. See Williamson at *12, *20; see also Gracenote, Inc. v. Iceberg Indus.,
`
`LLC, IPR2013-00551, Paper No. 6 (Feb. 28, 2014).
`
`Claim 13 recites a “mobile station” including the above noted “circuitry
`
`operable to . . . .” However, claim 13 does not define structure associated with the
`
`
`
`13
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`claimed “circuitry” or the function of “send[ing] a request for location finding
`
`information from a mobile station as a message through the network to a location
`
`message server.” The same is true for the claimed “circuitry” and function of
`
`“receiv[ing] from the location message server, a message containing location
`
`finding information based on the cell occupied by at least one mobile station.”
`
`Similarly, claim 15, which depends from claim 13, does not define structure
`
`associated with the claimed “circuitry” or the function of “send[ing] the received
`
`message to another mobile station.” Therefore, “circuitry operable to send a
`
`request for location finding information from a mobile station as a message
`
`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,” as recited in
`
`claim 13, and “circuitry operable to send the received message to another mobile
`
`station,” as recited in claim 15, should be interpreted under § 112, para. 6.
`
`Turning to the next inquiry for these means-plus-function terms, the
`
`identified function for the first “circuitry operable to” recited in claim 13 is
`
`“send[ing] a request for location finding information from a mobile station as a
`
`message through the network to a location message server.” The identified
`
`function for the second “circuitry operable to” recited in claim 13 is “receiv[ing]
`
`from the location message server, a message containing location finding
`
`
`
`14
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`information based on the cell occupied by at least one mobile station.” The
`
`identified function for the third “circuitry operable to” is “send[ing] the received
`
`message to another mobile station.”
`
`Turning to the specification, the ’667 patent does not specify what structure
`
`corresponds to any of these above-identified functions. (See generally Ex. 1001.)
`
`Indeed, the only description in the specification relating to these identified
`
`functions is to a “mobile station.” (See e.g., id. at 3:41 (“the mobile station MS1
`
`sends a request”), 4:8-14 (describing a message received by MS1), 4:15-18, 4:40-
`
`45.) The specification does not disclose any circuitry or circuits included in a
`
`mobile station that perform the above-identified functions. Claim 13 and
`
`dependent claim 15 recite a “mobile station” comprising the above noted “circuitry
`
`operable to” features, and thus the generically disclosed “mobile station” does not
`
`describe the “circuitry” that corresponds to the three different identified functions
`
`recited in the claims.
`
`Despite this deficiency, in the co-pending litigation, Patent Owner has
`
`argued that the structure that corresponds to all of the identified functions is a
`
`“mobile station (MS).” (See Ex. 1010 at 14-16; Ex. 1011 at 28.) Therefore, for
`
`purposes of this proceeding, and without conceding to Patent Owner’s positions,
`
`Petitioner assumes that the corresponding structure for the identified functions of
`
`“send[ing] a request for location finding information from a mobile station as a
`
`
`
`15
`
`

`
`Petition for Inter Partes Review – Patent No. 7,072,667
`
`
`message through the network to a location message server,” “receiv[in