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.
`
`__________________
`
`
`
`U.S. Patent No. 7,525,484
`
`Title: GATEWAY AND HYBRID SOLUTIONS FOR WIRELESS LOCATION
`
`__________________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ...........................................................................11
`A. Real Party-In-Interest ...........................................................................11
`B. Related Matters .....................................................................................12
`C. Counsel and Service Information .........................................................12
`III. PAYMENT OF FEES ...................................................................................13
`IV. GROUNDS FOR STANDING ......................................................................13
`A. Petitioners have standing to bring this Petition ....................................13
`B. Petitioners are not barred by the prior litigation ...................................14
`IDENTIFICATION OF CHALLENGE ........................................................15
`V.
`VI. THE ’484 PATENT .......................................................................................15
`A. Overview ...............................................................................................15
`B. Prosecution History ..............................................................................16
`C. Level of ordinary skill in the art ...........................................................16
`VII. CLAIM CONSTRUCTION ..........................................................................17
`A.
`“obtained via transmissions” and related terms ...................................17
`VIII. PRIOR ART ...................................................................................................18
`A. State of the Art ......................................................................................18
`B. Loomis ..................................................................................................19
`C. Wortham ...............................................................................................19
`D. Combinations of Prior Art ....................................................................19
`1. Overview .......................................................................................19
`2. Two-Way Wireless Communication and Location Functionality 21
`3. Satellite / Non-Terrestrial GPS Technique ...................................23
`4. Terrestrial Radio Technique .........................................................25
`5. Resulting Location Determination ................................................27
`Independent Location Techniques ................................................29
`6.
`
`
`
`
`
`i
`
`

`
`IX. GROUNDS OF UNPATENTABILITY ...................................................... ..42
`
`7. Reasons to Modify and/or Combine .............................................35
`7. Reasons to Modify and/or Combine ........................................... ..35
`IX. GROUNDS OF UNPATENTABILITY ........................................................42
`A. Claims 25 is obvious under 35 U.S.C. § 103 in view the Loomis-
`A.
`Claims 25 is obvious under 35 U.S.C. § 103 in View the Loomis-
`Wortham combination ..........................................................................42
`Wortham combination ........................................................................ ..42
`CONCLUSION ..............................................................................................60
`
`X.
`
`X.
`
`CONCLUSION ............................................................................................ ..6O
`
`
`
`
`
`
`
`
`
`
`
`ii
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`

`
`Number
`
`EXHIBITS1
`
`
`Description
`
`1001
`
`U.S. Patent No. 7,764,231 (the “’231 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 7,525,484 (the “’484 Patent”)
`(PATENT CHALLENGED IN THIS PETITION)
`
`U.S. Patent No. 8,032,153 (the “’153 Patent”)
`
`U.S. Patent No. 7,298,327 (the “’327 Patent”)
`
`Curriculum Vitae of Dr. William Michalson
`
`Expert Declaration of Dr. William Michalson
`
`U.S. Patent No. 5,724,660 to Kauser (“Kauser”)
`
`U.S. Patent No. 5,936,572 to Loomis (“Loomis”)
`
`U.S. Patent No. 6,748,226 to Wortham (“Wortham”)
`
`International PCT Application No. PCT/US93/12179
`Schuchman (“Schuchman”)
`
`to
`
`U.S. Patent No. 5,327,144 to Stilp (“Stilp”)
`
`FAA Advisory Circular 20-101C, Airworthiness Approval of
`Omega/VLF Navigation Systems For Use in the U.S. National
`
`
`1 For the Board’s convenience, Petitioners have used the same set of exhibits and
`
`exhibit numbering as used in instituted petitions for the ’484 Patent (see IPR2015-
`
`01708 and IPR2015-01711), with the following exceptions: (1) an updated expert
`
`declaration from Dr. Michalson (Ex. 1006); and (2) the addition of Exhibits 1024-
`
`1027.
`
`
`
`
`
`iii
`
`

`
`Airspace System (NAS) and Alaska (Sep. 12, 1988)
`
`FAA Advisory Circular 20-130A, Airworthiness Approval of
`Navigation or Flight Management Systems Integrating Multiple
`Navigation Sensors (Jun. 14, 1995)
`
`FCC Notice of Proposed Rulemaking for Locating Wireless 911
`Callers (Released Oct. 19, 1994)
`
`TR45 Joint Experts Meeting (JEM) for Emergency Services (Aug.
`18, 1994)
`
`C.J. Driscoll & Associates, Survey of Location Technologies to
`Support Mobile 9-1-1, July 1994 (“Driscoll Survey”)
`
`Claim Construction Order (MetroPCS and TCS lawsuits)
`
`Supplemental Claim Construction Order
`
`Complaint against MetroPCS
`
`Complaint filed by TCS
`
`Dismissal Request (MetroPCS and TCS lawsuits)
`
`Dismissal Order (MetroPCS and TCS lawsuits)
`
`MetroPCS Corporate Disclosure Statement (MetroPCS lawsuit)
`
`T-Mobile US, Inc. et al v. TracBeam, LLC, Case IPR2015-01681,
`Paper 12
`
`T-Mobile US, Inc. et al v. TracBeam, LLC, Case IPR2015-01708,
`Paper 10
`
`T-Mobile US, Inc. et al v. TracBeam, LLC, Case IPR2015-01711,
`Paper 9
`
`Excerpts of Fed. R. Civ. P. 30(b)(6) Deposition of Dr. Dennis
`Dupray, February 17, 2016
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`
`
`
`
`
`
`iv
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`

`
`I.
`
`INTRODUCTION
`
`Petitioners T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication
`
`Systems, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson (collectively
`
`“Petitioners”) respectfully request inter partes review of Claim 25 of U.S. Patent
`
`No. 7,525,484 (the “’484 Patent,” attached as Ex. 1002) in accordance with 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq. The expert declaration of Dr.
`
`William Michalson (attached as Ex. 1006) is provided in support of this Petition
`
`and is cited throughout as “Expert Decl.”
`
`On August 11, 2015, Petitioners filed three petitions for inter partes review
`
`of the ’484 Patent (Case Nos. IPR2015-01708, IPR2015-01709, and IPR2015-
`
`01711). Patent Owner and Petitioners agreed to drop IPR2015-01709 in its
`
`entirety, as well as certain claims of IPR2015-01708 and IPR2015-01711. On
`
`February 8, 2016, the Board instituted review on the remaining claim in IPR2015-
`
`01711 and on Claims 1 and 51 in IPR2015-01708. The Board denied institution of
`
`Claim 25 in IPR2015-01708. For the reasons set forth below, Petitioners
`
`respectfully submit that Claim 25 is invalid and therefore request that the Board
`
`grant inter partes review of this claim and join this proceeding with related IPR
`
`proceeding IPR2015-01708.2
`
`2 By separate motion filed herewith, Petitioner requests that this proceeding be
`
`joined with IPR2015-01708.
`
`
`
`
`
`1
`
`

`
`Loomis and Wortham both teach the very limitation that the Board relied on
`
`in declining to institute Claim 25: “for at least one location L…neither of the first
`
`and second position information is dependent upon the other.” As acknowledged
`
`in the recent testimony of named inventor Dennis Dupray discussed below, and
`
`explained in Dr. Michalson’s expert declaration, this is not a novel requirement.
`
`(See Ex. 1027 at 332:11 - 333:4, 334:2-12; see also Expert Decl. § IX.G.3.)
`
`Location techniques that provide independent position results, such as GPS and
`
`ground-based techniques, have been known for decades before Patent Owner’s
`
`claimed invention. (Expert Decl. § VII.B.) While the Board was not persuaded
`
`that Loomis discloses independent location techniques, Petitioners respectfully
`
`contend that Loomis discloses multiple embodiments, which can be implemented
`
`using either dependent or independent location techniques.
`
`For example, although Loomis discloses embodiments where the radio LD
`
`system uses relative phase information that is determined by the outdoor LD
`
`system (Ex. 1008 (Loomis) at 7:29-35), that was intended to be an improvement
`
`over the prior art and is not the only embodiment disclosed in Loomis.
`
`Specifically, Loomis acknowledges that, in another embodiment known in the prior
`
`art, the radio LD system can determine the phase differences using a stationary FM
`
`signal monitor (rather than using the outdoor LD system):
`
`
`
`
`
`2
`
`

`
`This radio LD system may operate in a manner parallel to, but
`different from, the FM subcarrier signal system disclosed by
`Kelley et al in U.S. Pat. No. 5,173,710, discussed above.
`
`…
`
`Use of a stationary FM signal monitor with fixed and known
`location, which does not otherwise participate in determination of the
`selected location coordinates (x,y,z), to determine the phase
`differences ΔΦik (i,k=21, 23, 25) is disclosed in U.S. Pat. No.
`5,173,710 issued to Kelley et al, discussed above and incorporated
`herein by reference.
`
`…
`
`The radio LD signal monitor 32 (FIG. 1) receives the three radio LD
`signals and determines the phase differences ΔΦik (i,k=1,2,3). The
`radio LD signal monitor 32 uses its knowledge of the separation
`distances between itself and the radio LD signal sources, plus the
`measured initial (and, optionally, subsequent) signal phase
`differences at the monitor.
`
`(Ex. 1008 (Loomis) at 4:62-65, 11:6-15, 10:49-55 (emphasis added); see also id. at
`
`3:45-56.) Thus, Loomis discloses embodiments of its radio LD system that
`
`perform the radio LD phase measurements using a stationary FM signal monitor
`
`rather than using the outdoor LD system, as described in the prior art Kelley patent
`
`that is incorporated by reference in Loomis. (Id.) In those embodiments, the radio
`
`LD system would not rely on the outdoor LD system for the radio LD phase
`
`
`
`
`
`3
`
`

`
`measurements, and thus the radio and outdoor LD systems would each determine
`
`locations independently from each other. Thus, those embodiments clearly satisfy
`
`the requirement of Claim 25 that “for at least one location L…neither of the first
`
`and second position information is dependent upon the other.” Accordingly,
`
`Petitioners believe that Loomis explicitly teaches embodiments that satisfy this
`
`limitation in Claim 25. At a minimum, however, it would have been obvious to
`
`implement Loomis’ radio LD system using the prior art location techniques
`
`disclosed in Loomis (such as those from the Kelley patent discussed in Loomis),
`
`which would satisfy this limitation of Claim 25.
`
`
`
`Moreover, Wortham unambiguously discloses a cell-tower
`
`location
`
`technique that generates a location estimate which does not depend on any
`
`satellite-based position information:
`
`Referring now to FIG. 4, mobile unit 17 does not require [satellite-
`based3] mobile positioning receiver 24 for operation within
`positioning system 200. TOA data is received by transceiver 92 and
`
`
`3 As explained earlier in Wortham, the mobile positioning receiver 24 “receives
`
`position signals from satellites 18, 20, 22 over message data streams 26, 28, 30 at
`
`antenna 82.” (Ex. 1009 (Wortham) at 11:11-13.) Accordingly, this portion of
`
`Wortham explains that the TOA technique used in positioning system 200 does not
`
`rely on the satellite position signals of the “mobile positioning receiver.”
`
`
`
`
`
`4
`
`

`
`sent to processor 100, which uses the TOA data to compute
`pseudoranges to cellular transmitter sites 202, 204, 206. Using
`well-known triangulation techniques described with reference to
`FIG. 3, processor 100 may then compute a position fix of mobile unit
`17 using the pseudoranges and known position coordinates of
`transmitter sites 202, 204, 206 stored in memory 102.
`
`(Ex. 1009 (Wortham) at 14:3-12 (emphasis added).) In related proceedings, the
`
`Board already addressed the above disclosure in Wortham, and the Board has
`
`separately concluded that it would have been obvious to combine Loomis and
`
`Wortham:
`
`In addition, Patent Owner argues that the Petition fails to identify
`what “a signal time delay dependent condition” is or how it “is
`satisfied using the signal time delay data,” or how that requirement is
`present in the asserted combination, per the element discussed in (5)
`above. Prelim. Resp. 12–13. We do not agree. The Petition directs
`attention to sections of columns 13 and 14 of Wortham (Pet. 42–43),
`where it describes that TOA data may be used to compute
`pseudoranges, which are then used to compute a position fix of the
`mobile unit. Ex. 1009 [Wortham], 14:5–12.
`
`(Ex. 1024 (Institution Decision from IPR2015-01681) at 18-19 (emphasis added).)
`
`On this record, we are persuaded that Petitioner is reasonably likely
`to show that a skilled artisan would have combined Loomis and
`Wortham.
`
`(Ex. 1025 (Institution Decision from IPR2015-01708) at 14 (emphasis added).)
`
`
`
`
`
`5
`
`

`
`Thus, as explained in greater detail in Section VIII.D.6 (Independent
`
`Location Techniques), both Loomis and Wortham disclose a terrestrial location
`
`technique that calculates position information independently of any GPS or
`
`satellite-based technique.
`
`This Petition is justified by several factors, including: (1) the prejudice to
`
`Petitioners caused by Patent Owner’s assertion of an unreasonable number of
`
`claims in the co-pending litigation; (2) recent deposition testimony from Dr.
`
`Dennis Dupray, a named inventor of the ’484 Patent, that was not available when
`
`IPR proceedings IPR2015-01708 and IPR2015-01711 were filed; and (3) the
`
`public interest in adjudicating the validity of a clearly invalid claim and having
`
`consistent outcomes concerning similar sets of claimed subject matter and prior art.
`
`First, Patent Owner asserted more than 140 claims against petitioner T-
`
`Mobile in the co-pending litigation. At the time Petitioners filed the original
`
`IPRs,4 Patent Owner was still asserting nearly 80 claims. Patent Owner’s assertion
`
`of an unreasonable number of claims was undoubtedly intended to hinder T-
`
`Mobile’s ability to challenge the asserted claims using the IPR process. By
`
`comparison, in Patent Owner’s other lawsuits that were filed before the current IPR
`
`4 See
`IPR2015-01681;
`
`IPR2015-01686;
`
`IPR2015-01682;
`
`IPR2015-01684;
`
`IPR2015-01687; IPR2015-01712; IPR2015-01708; IPR2015-01709; IPR2015-
`
`01711; and IPR2015-01713.
`
`
`
`
`
`6
`
`

`
`procedures were available, Patent Owner asserted under 20 claims against each
`
`defendant from the outset. Unsurprisingly, Patent Owner dropped the majority of
`
`the asserted claims against T-Mobile after Petitioners filed the initial IPR petitions,
`
`narrowing to 15 claims just before Patent Owner’s November 2015 deadline for its
`
`preliminary responses.5 This gamesmanship made it unrealistic for the initial IPR
`
`petitions to proactively address every conceivable argument from the Patent
`
`Owner.
`
`Second, since filing IPR2015-01708 and IPR2015-01711, Petitioners have
`
`deposed a named inventor of the challenged patent, Dr. Dennis Dupray, in
`
`connection with the co-pending litigation identified in Section II.B. (See Ex.
`
`1027.) During his deposition, Dr. Dupray admitted that it was known in the art at
`
`the time of his alleged invention that a GPS location technique and a cellular
`
`triangulation technique could each produce independent location estimates:
`
`Q. Is GPS dependent on cell tower triangulation?
`A. No, sir. It's not -- oh, I don't think so.
`Q. Is cell tower [triangulation] dependent on GPS?
`A. That's a difficult -- that's a difficult question to answer.
`Q. Why?
`A. Because it may or may not be in certain circumstances.
`Q. So cell tower triangulation doesn't have to be dependent on GPS,
`
`
`5 Patent Owner is currently asserting 14 claims in the co-pending litigation.
`
`
`
`
`
`7
`
`

`
`correct?
`A. There may be a version.
`Q. There was a version of cell tower triangulation prior to
`TracBeam's invention that did not involve GPS, correct?
`A. I don't have any in mind right at this time. My belief is there
`probably was.
`
`. . .
`Q. So [] prior art techniques did exist prior to your invention that were
`not dependent on each other, correct?
`A. I believe so.
`
`(Ex. 1027 at 332:11 - 333:4, 334:2-12 (emphasis added).)
`
`This testimony further illustrates that the prior art teaches the very
`
`limitation that the Board relied on in declining to institute Claim 25 (i.e., “wherein
`
`neither of the first and second position information is dependent upon the other”).
`
`(See Ex. 1025 at 19-20.) Dr. Dupray’s testimony confirms the teachings of Loomis
`
`and Wortham: that multiple, independent location techniques can output location
`
`estimates that are independent of each other.
`
`Third, given that both the prior art and Dr. Dupray’s testimony confirm that
`
`the limitations of Claim 25 were known, and that inter partes review has been
`
`instituted for other claims of similar scope using the same prior art references, it
`
`would be against the public’s interest not to institute inter partes review of this
`
`clearly invalid claim.
`
`In view of the petitions that have already been instituted for the ’484 Patent,
`
`
`
`
`
`8
`
`

`
`there would be no prejudice to Patent Owner from joinder of the grounds in this
`
`Petition with those in the instituted petitions. This Petition involves the same
`
`parties, the same challenged patent, the same claim construction positions, the
`
`same expert witness, and the same prior art combination that was presented in the
`
`instituted petitions for IPR2015-01708 and IPR2015-01711. See Samsung
`
`Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., Case IPR2014-00557
`
`(PTAB June 13, 2014) (Paper 10 at 17-18). This Petition simply identifies new
`
`inventor testimony further demonstrating the invalidity of the challenged claim,
`
`and it provides further clarification on how the Loomis-Wortham combination
`
`satisfies the claim limitations relied on in the Board’s prior decision not to institute
`
`review of this claim. Petitioners should not be precluded from challenging this
`
`clearly invalid claim when Patent Owner strategically asserted an unreasonable
`
`number of claims solely to prejudice Petitioners’ ability to utilize the inter partes
`
`review process.
`
`Analogous to the Board’s decision in Samsung to join a subsequent IPR
`
`petition (filed after the one-year bar) with a previously instituted petition, this
`
`Petition will “not delay unduly the resolution of either [IPR2015-01708 and
`
`IPR2015-01711].” See Samsung, IPR2014-00557 at 17-18. Claim 25 is similar in
`
`scope to the other claims that have already been instituted, and it is challenged
`
`using the same prior art references. Moreover, as noted above, the Board has
`
`
`
`
`
`9
`
`

`
`already embraced the combination of Loomis and Wortham. (See Ex. 1025 at 14
`
`(holding “Petitioner is reasonably likely to show that a skilled artisan would have
`
`combined Loomis and Wortham.”).) With respect to this IPR proceeding, the
`
`primary difference is that Claim 25 requires “for at least one location L…neither of
`
`the first and second position information is dependent upon the other.” As
`
`acknowledged in the recent testimony of named inventor Dr. Dennis Dupray, and
`
`explained in Dr. Michalson’s expert declaration and throughout this Petition, that
`
`claim limitation is not a novel requirement. (See Ex. 1027 at 332:11 - 333:4,
`
`334:2-12; see also Expert Decl. § IX.G.3.)
`
`Because this Petition concerns the same patent, the same prior art
`
`combinations, the same claim constructions, the same expert witness, and nominal
`
`additional subject matter, “the minimal additional amount of work required on the
`
`part of the Patent Owner to address [Claim 25 of the ’484 Patent] is strongly
`
`outweighed by the public interest in having consistency of outcome concerning
`
`similar sets of claimed subject matter and prior art.” See Samsung, IPR2014-
`
`00557 at 18. Accordingly, the Board should institute review of the challenged
`
`claim and join this proceeding with Petitioners’ related IPR proceeding IPR2015-
`
`01708.
`
`
`
`
`
`10
`
`

`
`For the Board’s convenience, Petitioners identify the portions of this Petition
`
`that contain the primary substantive changes as compared with the prior petition
`
`from IPR2015-01708:
`
`• This introduction section;
`
`• The section discussing the independent location techniques in Loomis
`
`and Wortham (Section VIII.D.6);
`
`• The section discussing the reasons to modify and/or combine the prior
`
`art (Section VIII.D.7); and
`
`• The analysis provided for Claim Element 25.5 (Section IX.A).
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`The real parties-in-interest are Petitioners T-Mobile US, Inc. and T-Mobile
`
`USA, Inc. (collectively “T-Mobile”), Petitioner TeleCommunication Systems, Inc.
`
`(“TCS”), and Petitioners Ericsson Inc. and Telefonaktiebolaget LM Ericsson
`
`(collectively, “Ericsson”).
`
`For disclosure purposes, the following entities own more than 10% of the
`
`publicly traded shares (either directly or indirectly) of Petitioner T-Mobile:
`
`Deutsche Telekom AG, T-Mobile Global Holding GmbH, T-Mobile Global
`
`Zwischenholding GmbH, and Deutsche Telekom Holding B.V.
`
`Finally, Petitioner T-Mobile merged with MetroPCS Wireless, Inc. and
`
`
`
`
`
`11
`
`

`
`MetroPCS Communications, Inc. (collectively “MetroPCS”) in April 2013, and
`
`thus the MetroPCS entities no longer exist. (Ex. 1023 (MetroPCS Corporate
`
`Disclosure Statement).)
`
`B. Related Matters
`The ’484 Patent is or was involved in the following lawsuits: (1) TracBeam,
`
`LLC v. T-Mobile US, Inc., No. 6:14-cv-00678 (E.D. Tex.); (2) TracBeam, LLC v.
`
`Apple Inc., No. 6:14-cv-00680 (E.D. Tex.); (3) TracBeam, LLC. v. Google, Inc.,
`
`No. 6:13-cv-00093 (E.D. Tex.); (4) TeleComm. Sys., Inc. v. TracBeam, LLC, Nos.
`
`6:12-cv-00058 (E.D. Tex.), 1:11-cv-02519 (D. Colo.); and (5) TracBeam, LLC v.
`
`MetroPCS Commc’ns, Inc. et al., No. 6:11-cv-00096 (E.D. Tex.).
`
`Patent Owner TracBeam is currently asserting the ’484 Patent and three
`
`other related patents (attached as Exs. 1001–1004) against Petitioner T-Mobile in
`
`the first lawsuit identified above. Petitioners previously filed three other Petitions
`
`for inter partes review of the ‘484 Patent (Case Nos. IPR2015-01708, IPR2015-
`
`01709, and IPR2015-01711). Patent Owner and Petitioners agreed to drop
`
`IPR2015-01709. On February 8, 2016, the Board instituted review as to certain
`
`claims of IPR2015-01708 and IPR2015-01711. (Exs. 1025 and 1026.) By
`
`separate motion filed herewith, Petitioner requests that this proceeding be joined
`
`with related IPR proceeding IPR2015-01708.
`
`C. Counsel and Service Information
`
`
`
`
`
`12
`
`

`
`Lead Counsel is Brian W. Oaks (Reg. No. 44,981) of Baker Botts LLP;
`
`Back-up Counsel is Douglas M. Kubehl (Reg. No. 41,915), Chad C. Walters (Reg.
`
`No. 48,022), and Ross G. Culpepper (Reg. No. 69,339) of Baker Botts LLP. A
`
`Power of Attorney is filed concurrently herewith under 37 C.F.R. § 42.10(b).
`
`Service information is as follows: Baker Botts LLP, 98 San Jacinto Blvd.,
`
`Suite 1500, Austin, TX 78701; Phone: (512) 322-5470; Fax: (512) 322-3621.
`
`Petitioners consent to service by electronic mail at brian.oaks@bakerbotts.com,
`
`doug.kubehl@bakerbotts.com,
`
`chad.walters@bakerbotts.com,
`
`and
`
`ross.culpepper@bakerbotts.com.
`
`III. PAYMENT OF FEES
`The undersigned authorizes the Office to charge the fee required by 37
`
`C.F.R. § 42.15(a) for this Petition to Deposit Account No. 02-0384, as well as any
`
`additional fees that might be due in connection with this Petition.
`
`IV. GROUNDS FOR STANDING
`Petitioners have standing to bring this Petition
`A.
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the ’484
`
`Patent is available for inter partes review and that the Petitioners are not barred or
`
`estopped from requesting inter partes review of the challenged claims of the ’484
`
`Patent. A motion requesting joinder of this proceeding with IPR2015-01708 is
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`filed concurrently herewith. When a petition is accompanied by a request for
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`joinder with another timely-filed IPR proceeding, that petition is itself timely under
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`the joinder rules. See 37 C.F.R. § 42.122(b) (explaining that “[t]he time period set
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`forth in § 42.101(b) shall not apply when the petition is accompanied by a request
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`for joinder”).
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`Further, as explained below, Petitioners are not barred based on the prior
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`TracBeam lawsuits involving MetroPCS and TCS (see Section II.B (Related
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`Matters)) because those lawsuits were dismissed without prejudice.
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`Petitioners are not barred by the prior litigation
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`B.
`Petitioner T-Mobile (which merged with MetroPCS in 2013) is not barred by
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`Patent Owner TracBeam’s prior litigation against MetroPCS, and Petitioner TCS is
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`not barred by its prior litigation with Patent Owner TracBeam. (See Section II.B
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`(Related Matters).) Those lawsuits were dismissed without prejudice, and thus are
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`treated as if they had never been filed.
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`Specifically, on February 25, 2011, TracBeam filed a civil action against
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`MetroPCS alleging infringement of the ’231 Patent. (Ex. 1019 (Complaint against
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`MetroPCS).) On September 27, 2011, TCS filed a declaratory judgment action
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`against TracBeam with respect to the ’231 Patent (in response to TracBeam’s
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`lawsuit against TCS’s customers, including MetroPCS). The TCS lawsuit and the
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`MetroPCS lawsuit were eventually consolidated. On June 17, 2013, both the
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`MetroPCS and TCS lawsuits were dismissed without prejudice after the parties
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`filed an agreed dismissal request. (Ex. 1021 (Dismissal Request); Ex. 1022
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`(Dismissal Order).) The Board has held that a civil action—including a
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`declaratory judgment action—dismissed without prejudice does not bar a petition
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`for inter partes review (“IPR”), as such dismissals are treated as if the lawsuit had
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`never been brought. “[A] prior action that is voluntarily dismissed without
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`prejudice does not give rise to 35 U.S.C. §§ 315 (a)(1) or (b) statutory bars.”
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`Microsoft Corp. v. Parallel Networks Licensing LLC, IPR2015-00486, Paper 10 at
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`14 (PTAB Jul. 15, 2015). Thus, Petitioners cannot be barred from bringing this
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`Petition based on the prior litigation.
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`V.
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`IDENTIFICATION OF CHALLENGE
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`Petitioners challenge Claim 25 of the ’484 Patent on the following ground:
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`Challenged Claim
`25
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`Statutory Basis
`35 U.S.C. § 103
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`Prior Art References
`Loomis and Wortham
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`Section VII identifies how the challenged claim is to be construed. Section IX
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`identifies: (1) the statutory ground on which the challenge to Claim 25 is based and
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`how Claim 25 is unpatentable; and (2) the exhibit numbers of the supporting
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`evidence and the relevance of that evidence.
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`VI. THE ’484 PATENT
`A. Overview
`The ’484 Patent was filed on January 26, 2001 as a continuation of the ’231
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`Patent, and claims priority to U.S. Provisional Application Nos. 60/025,855 (filed
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`September 9, 1996), 60/044,821 (filed April 25, 1997), and 60/056,590 (filed
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`August 20, 1997).
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`The ’484 Patent relates to a system and method for locating mobile stations
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`using a combination of wireless location techniques, including satellite (e.g., GPS)
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`and terrestrial (e.g., cell-tower triangulation) techniques. (Ex. 1002 (’484 Patent)
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`at Abs.) For example, certain claims require (1) using multiple location techniques
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`to obtain location information for a mobile station, and (2) determining a resulting
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`estimate using the location information from each technique. (See, e.g., Claim 1
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`(Ex. 1002 (’484 Patent) at 171:16-56.) A more detailed description of the patented
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`technology is provided in Dr. Michalson’s expert declaration. (Expert Decl. § III.)
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`Prosecution History
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`B.
`The ’484 Patent was prosecuted for over 8 years. Notably, despite the
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`extraordinary length of prosecution, there were no substantive rejections based on
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`prior art. Accordingly, the prosecution history of the ’484 Patent provides limited
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`guidance as to the understanding and interpretation of the claims for the purposes
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`of this proceeding.
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`C. Level of ordinary skill in the art
`A person of ordinary skill in the art in the field of the ’484 Patent would
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`typically have (1) a degree in electrical engineering, computer engineering,
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`computer science, or a related field, and (2) one to four years of experience and/or
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`postgraduate study relating to wireless communication systems and/or wireless
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`location and navigation technologies. (Expert Decl. § V.) However, someone with
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`less technical education but more practical experience, or vice versa, could also
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`meet that standard. (Id.)
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`VII. CLAIM CONSTRUCTION
`Several of the terms used in Claim 25 were construed in connection with a
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`prior lawsuit filed by Patent Owner TracBeam, using the applicable claim
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`construction standards for district court proceedings.
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` (Ex. 1017 (Claim
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`Construction Order).) Additionally, the Board construed (or declined to construe)
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`several terms in the institution decisions for IPR2015-01708 and IPR2015-01711,
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`using the broadest reasonable interpretation of the claims in light of the
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`specification. See 37 C.F.R. § 42.100(b). (See Exs. 1025 and 1026.)
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`“obtained via transmissions” and related terms
`A.
`Challenged Claim 25 requires that certain values are “obtained using
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`wireless signal measurements obtained via two way wireless communication
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`between said mobile station M, and the communication stations.” (See Claim
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`Element 25.4.) The Board’s institution decision in IPR2015-01708 concluded that
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`the broadest reasonable interpretation of this claim phrase covers two scenarios: (1)
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`the wireless signal measurements themselves are transmitted between the
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`communication stations and the mobile station (e.g., GPS satellite signal
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`measurements are transmitted from the mobile station to the communication
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`stations), and (2) the wireless signal measurements are simply generated using the
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`transmissions between the communication stations and mobile station (e.g., the
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`mobile station measures the signals transmitted from communication stations).
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`(See Ex. 1025 at 7-8.) For purposes of this proceeding, Petitioners agree with the
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`Board’s prior construction of this claim phrase.
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`VIII. PRIOR ART
`State of the Art
`A.
`As acknowledged by the ’484 Patent, various location determining
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`technologies were widely known, understood, and implemented by those of skill in
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`the art at the time of the alleged invention. (See, e.g., Ex. 1002 (’484 Patent) at
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`1:43–2:29.)
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`Examples of preexisting location determining technologies include GPS,
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`GLONASS, Loran-C, Omega, and various other ground-based positioning
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`technologies, such as signal strength, time-of-arrival (TOA), and time-difference-
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`of-arrival (TDOA) techniques. (See, e.g., Ex. 1009 (Wortham) at 2:63–3:5; Ex.
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`1007 (Kauser) at 1:61-2:40, 2:62-66; Ex. 1011 (Stilp) at Abs., 5:5-26, 6:41-55,
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`14:31-39; Ex. 1012 (FAA Advisory Circular 20-101C) at 1.) Hybrid location
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`systems that used multiple location techniques were also widely known and
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`understood by those of skill in the art at the time of the alleged invention. (See,
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`e.g., Ex. 1008 (Loomis) at Abs.; Ex. 1007 (Kauser) at 2:62-66; Ex. 1010
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`(Schuchman) at 1:1-12, 5:2