Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: February 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01711
`Patent 7,525,484 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, DAVID C. MCKONE, JAMES A. TARTAL,
`and BARBARA A. PARVIS, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`T-Mobile / TCS / Ericsson EXHIBIT 1026
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: February 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioners,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01711
`Patent 7,525,484 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, DAVID C. MCKONE, JAMES A. TARTAL,
`and BARBARA A. PARVIS, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`T-Mobile / TCS / Ericsson EXHIBIT 1026
`T-Mobile / TCS / Ericsson v. TracBeam
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`IPR2015-01711
`Patent 7,525,484 B2
`
`I. INTRODUCTION
`
`A. Background
`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication
`Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an
`inter partes review of claims 27, 39, and 62 of U.S. Patent No. 7,525,484 B2
`(Ex. 1002, “the ’484 patent”). The parties reached agreement to remove
`claims 39 and 62 from the proceeding. Paper 6 (Joint Motion to Limit
`Petition); Paper 7 (Joint Submission of Narrowing Agreement). We
`accepted that agreement and limited this proceeding to claim 27. Paper 8.
`Upon consideration of the Petition, we conclude, under
`35 U.S.C. § 314(a), that Petitioner has established a reasonable likelihood
`that it would prevail with respect to claim 27. Accordingly, we institute an
`inter partes review of claim 27 of the ’484 patent.
`
`B. Related Matters
`The ’484 patent is the subject of several lawsuits filed in the United
`States District Court for the Eastern District of Texas. Pet. 2; Paper 5, 1–2.
`The ’484 patent also is the subject of Apple Inc. v. TracBeam, LLC,
`Case IPR2015-01696 (PTAB); Apple Inc. v. TracBeam, LLC, Case
`IPR2015-01697 (PTAB); and T-Mobile US, Inc. v. TracBeam, LLC., Case
`IPR2015-01708 (PTAB). Pet. 1; Paper 5, 3.
`Various related patents also are the subjects of these and other
`proceedings before the district courts and the Board. Paper 5, 1–3.
`
`
` 2
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`IPR2015-01711
`Patent 7,525,484 B2
`C. The Asserted Grounds
`Petitioner contends that claim 27 would have been obvious, under 35
`U.S.C. § 103, over Kauser (Ex. 1007, U.S. Patent No. 5,724,660, issued
`Mar. 3, 1998). Pet. 6.
`
`D. The ’484 Patent
`The ’484 patent describes location systems for wireless
`telecommunication infrastructures. Ex. 1002, Abstract. According to the
`’484 patent, the location techniques are useful for 911 emergency calls,
`vehicle tracking and routing, and location of people and animals. Id. at
`Abstract, 12:11–17.
`Figure 4, reproduced below, illustrates an embodiment:
`
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`IPR2015-01711
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`Figure 4 is an overall view of a wireless radio location network architecture.
`Id. at 21:66–67. The network includes a plurality of mobile stations (“MS”)
`140, a mobile switching center (“MSC”) 112, and a plurality of wireless cell
`sites forming radio coverage area 120, each site including a fixed-location
`base station 122 for voice and data communication with MSs 140. Id. at
`24:41–57. The network also includes location base stations (“LBS”) 152
`with wireless location enablement, e.g., with transponders used primarily in
`communicating MS location related information to location center 142 (via
`base stations 122 and MSC 112). Id. at 24:57–64. LBSs can be placed, for
`example, in dense urban areas, in remote areas, along highways, or wherever
`more location precision is required than can be obtained using conventional
`wireless infrastructure components. Id. at 28:29–38.
`Location center 142 determines a location of a target MS 140. Id. at
`25:8–10, 37:43–46. The system uses a plurality of techniques for locating
`MSs, including two-way time of arrival (“TOA”), time difference of arrival
`(“TDOA”), and Global Positioning System (“GPS”). Id. at Abstract, 9:5–23,
`11:7–55, 66:45–50. To determine a location for a MS, the system computes
`a first order model (also referred to as a hypothesis or estimate) for one or
`more of the locating techniques, computes a confidence value for each
`model indicating the likelihood that the model is correct, performs additional
`computations on the models to enhance the estimates, and computes from
`the models a “most likely” location for the MS. Id. at 12:62–13:20, 38:9–31.
`The most likely location can be composite of the estimates. Id. at 13:22–30,
`66:45–50.
`
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`IPR2015-01711
`Patent 7,525,484 B2
`Location estimates can be provided to location requesting
`applications, such as 911 emergency, police and fire departments, taxi
`services, etc. Id. at 8:52–60, 13:20–22, 38:32–34.
`
`Claim 27, the sole claim challenged in this proceeding, is reproduced
`below:
`
`27. A method for locating mobile stations at one or
`more unknown terrestrial locations using wireless signal
`measurements obtained via transmissions between said mobile
`stations and a plurality of
`fixed
`location
`terrestrial
`communication stations, wherein each of said communications
`stations includes one or more of a transmitter and a receiver for
`wirelessly communicating with said mobile stations, comprising:
`receiving, from a plurality of location requesting sources,
`a plurality of input requests for locations of the
`mobile stations, wherein for each of the input
`requests there is a corresponding destination for a
`responsive output;
`for each of the input requests, providing one or more
`location requests for location information, related to
`a location of one of said mobile stations, to one or
`more mobile station location determining sources;
`first obtaining, in response to a first of the location
`requests received from a first of the requesting
`sources, at least first location information of a first
`location of a first of said mobile stations, said first
`location information determined using a first set of
`one or more wireless location techniques;
`first determining, using said first location information,
`first output location data according to a first output
`criteria for the corresponding destination for the
`first request, said first output location data including
`a representation identifying a first geographical
`location of the first location;
`
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`IPR2015-01711
`Patent 7,525,484 B2
`second obtaining, in response to a second of the location
`requests received from a second of the requesting
`sources, at least second location information of a
`second location of a second of said mobile stations,
`said second location information determined using
`a second set of one or more wireless location
`techniques, wherein the second set determines the
`second location information by activating at least
`one location computing module for locating the
`second mobile station from at least a portion of the
`signal measurements, wherein the at least one
`location computing module is not activated for
`determining the first location information;
`second determining, using
`said
`second
`location
`information, second output location data according
`to a second output criteria for the corresponding
`destination for the second request, said second
`output location data including a representation
`identifying a second geographical location of the
`second location;
`wherein for at least one of said first and second output
`criteria, there is an output criteria for another of the
`location requests that is different from said at least
`one output criteria;
`first transmitting said first output location data to its
`corresponding destination via a communications
`network; and
`second transmitting said second output location data to its
`corresponding destination via a communications
`network, the first and second locations being
`different.
`
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`IPR2015-01711
`Patent 7,525,484 B2
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`Petitioner points out that the District Court in TracBeam, LLC v.
`AT&T, Inc., Case No. 6:11-CV-96 (E.D. Tex.), construed several terms of
`the challenged claims. Pet. 8–9 (citing Ex. 1017 (District Court’s Claim
`Construction Order)). Petitioner argues that no constructions of these terms
`are necessary, but indicates that it would accept the District Court’s claim
`constructions. Id. at 8–9. Patent Owner does not propose constructions for
`these terms. At this stage of the proceeding, we do not find it necessary to
`construe these terms expressly.
`For purposes of this Decision, no other claim term requires express
`construction.
`
`
`B. Asserted Grounds of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`
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`IPR2015-01711
`Patent 7,525,484 B2
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`In an obviousness analysis, some reason must be shown as to why a
`person of ordinary skill would have combined or modified the prior art to
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`art may be found explicitly or implicitly in market forces; design incentives;
`the “‘interrelated teachings of multiple patents’”; “‘any need or problem
`known in the field of endeavor at the time of invention and addressed by the
`patent’”; and the background knowledge, creativity, and common sense of
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418–21 (2007)).
`
`
`1. Overview of Kauser
`Kauser describes a technique for determining the location of a mobile
`telephone within a serving area of a mobile telephone system. Ex. 1007,
`Abstract. Figure 2, reproduced below, illustrates an example:
`
` 8
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`IPR2015-01711
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`
`
`Figure 2 is a diagram of mobile telephone system 200. Id. at 3:25–26.
`Cell 7 is shown containing antenna 107 connected to radio base station
`(“RBS”) 214. Id. at 3:59–60. RBS 214 (as well as other RBSs) is connected
`to mobile switching center (“MSC”) 220. Id. at 4:15–16.
`Mobile telephone 120 is also within cell 7, and is shown in
`communication with mobile telephone system 200 via air interface 202.
`Id. at 3:57–62. Mobile telephone 120 includes GPS receiver/processor unit
`125. Id. at 4:8–11. To assist in handing off communication from one cell to
`another, mobile telephone 120 maintains a list of strengths of the signals it is
`receiving from various base stations in adjacent cells. Id. at 4:60–5:12.
`Mobile telephone 120 periodically sends this list to MSC 220. Id. at 5:17–
`22.
`
`Mobile telephone system 200 also includes mobile location module
`(“MLM”) 230 (which, in turn, includes processor 232 and memory 234) for
`
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`IPR2015-01711
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`determining the specific geographic location of mobile telephone 120. Id. at
`5:23–32. MSC 220 performs an analysis on the telephone numbers of the
`caller and recipient and, based on that analysis, decides whether MLM 230
`will determine the location of mobile telephone 120. Id. at 5:37–49. For
`example, if mobile telephone 120 dials 911, MLM 230 will determine the
`location of mobile telephone 120. Id. at 5:40–41. In another example, a
`company managing a fleet of vehicles may want a location determination
`performed each time a call is initiated from one of its cellular telephones.
`Id. at 5:40–42.
`MLM 230 determines the best estimation of mobile telephone 120’s
`location by analyzing several pieces of information. Figure 10, reproduced
`below, illustrates an example:
`
`
`
`
`10
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`IPR2015-01711
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`Figure 10 is a flow diagram of the steps for calculating the location of a
`mobile telephone. Id. at 3:42–43.
`First, MLM 230 computes “zone 1” and “zone 2” location
`estimations. Id. at Fig. 10, box 1002. Zone 1 is defined by the geographic
`coverage area of the cell currently serving mobile telephone 120 (e.g., cell 7
`in Figure 2). Id. at 6:16–22, 11:43–45. Zone 2 is an area calculated by
`estimating the distance of mobile telephone 120 from the three strongest
`signals received from adjacent cells. Id. at 6:21–36, 11:45–47. Next, MLM
`230 compares calculated error values of the current GPS coordinates to
`thresholds to determine the accuracy of the GPS coordinates. Id. at 11:5–16,
`11:48–54, Figure 10, box 1004. If the GPS coordinates are accurate enough
`to be acceptable (box 1004, “YES” branch), MLM 230 compares the GPS
`coordinates to zone 1 and zone 2 information and determines whether to use
`the GPS coordinates (boxes 1018, 1024) or, alternatively, to use zone 2 (box
`1010) as the current location. Id. at 11:51–67. If the GPS coordinates are
`not accurate enough (box 1004, “NO” branch”), MLM 230 compares zone 1
`and zone 2 information to previously stored GPS coordinates and determines
`whether to use the stored coordinates (boxes 1016, 1022) or zone 2 (box
`1008) as the current location. Id. at 12:1–21.
`Once MLM 230 determines the geographic location area of mobile
`phone 120, it routes the information to the appropriate end user (e.g., in the
`examples above, the appropriate service provider associated with 911, or to
`the appropriate fleet company). Id. at 12:22–35.
`
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`IPR2015-01711
`Patent 7,525,484 B2
`2. Claim 27
`Petitioner provides a detailed mapping of Kauser to claim 27 in the
`Petition, at 30–45. Petitioner supports its contentions with the testimony of
`William R. Michalson, Ph.D. (Ex. 1006), which we have considered. To
`summarize, Petitioner contends, inter alia, that:
`Kauser’s description of providing location information to 911
`providers and vehicle fleet management companies
`teaches “receiving, from a plurality of location requesting
`sources, a plurality of input requests for locations of the
`mobile stations” (Pet. 32);
`MSC 220 initiating location functions in MLM 230 teaches
`“providing one or more location requests for location
`information, related to a location of one of said mobile
`stations, to one or more mobile station location
`determining sources” (id. at 33);
`Kauser’s description of locating any mobile telephone in a
`cellular network teaches “first obtaining” for a “first of
`said mobile stations” and “second obtaining” for a
`“second of said mobile stations” (id. at 33, 38);
`Kauser’s description of GPS technology teaches a “first set of
`one or more wireless location techniques” and its
`description of a “zone 2” location estimate teaches a
`“second set of one or more wireless location techniques”
`(id. at 35–36, 39);
`Kauser’s description of outputting GPS coordinates and a
`confidence value, determined, in part, from input GPS
`coordinates teaches “first determining, using said first
`location information, first output location data” and the
`stored routing information for each
`application/destination are “first output criteria” (id. at
`36–38);
`Kauser’s description of outputting a zone 2 estimate based, in
`part, on a zone 2 input, teaches “second determining,
`using said second location information, second output
`location data” and GPS error thresholds are a “second
`
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`IPR2015-01711
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`output criteria,” different from the identified first output
`criteria (id. at 40–44);
`Kauser’s description of sending resulting location estimates to
`appropriate end user destinations over the cellular
`network teaches “first transmitting” and “second
`transmitting” (id. at 44–45).
`As to claim 27’s limitation, “wherein the at least one location
`computing module is not activated for determining the first location
`information,” Petitioner contends that MLM 230 is a “location computing
`module” that determines “zone 2” estimates while a different module
`determines GPS location information. Id. at 39–40. Petitioner further
`argues that the steps of claim 27 do not specify a particular order. Id. at 33–
`34. Nevertheless, Petitioner argues that even if claim 27 does specify an
`order to its steps, it would have been obvious to implement Kauser’s
`location technique in that order, as it would have been a selection from a
`finite number of options, each with a reasonable expectation of success.
`Id. at 34–35 (citing Ex. 1006 § IX.G).
`Patent Owner did not file a Preliminary Response and, thus, has not
`yet argued that Kauser lacks a teaching of any particular limitation of
`claim 27.
`We have considered the evidence presented in the Petition,
`summarized above. On this record, we are persuaded that Petitioner has
`established a reasonable likelihood that it would prevail with respect to
`claim 27 as obvious over Kauser.
`
`
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`IPR2015-01711
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`III. CONCLUSION
`We institute an inter partes review of claim 27. We have not yet
`made a final determination of the patentability of this claim or the
`construction of any claim term.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted on the following
`ground:
`Claim 27, under 35 U.S.C. § 103(a), as obvious over Kauser;
`FURTHER ORDERED that the trial is limited to the ground identified
`above, and no other ground is authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of U.S. Patent No. 7,525,484 B2 is hereby instituted
`commencing on the entry date of this Order, and pursuant to 35 U.S.C.
`§ 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a
`trial.
`
`
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`IPR2015-01711
`Patent 7,525,484 B2
`PETITIONER:
`
`Brian W. Oaks
`Douglas M. Kubehl
`Chad C. Walters
`Ross G. Culpepper
`BAKER BOTTS LLP
`brian.oaks@bakerbotts.com
`doug.kubehl@bakerbotts.com
`chad.walters@bakerbotts.com
`ross.culpepper@bakerbotts.com
`
`PATENT OWNER:
`
`Sean Luner
`DOVEL AND LUNER, LLP
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
`
`
`15
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`T-Mobile / TCS / Ericsson EXHIBIT 1026
`T-Mobile / TCS / Ericsson v. TracBeam
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