Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No.11
`Entered: May 25, 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,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00745
`Patent 7,764,231 B1
`_______________
`
`
`
`Before KEVIN F. TURNER, JAMES A. TARTAL,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper No.11
`Entered: May 25, 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,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00745
`Patent 7,764,231 B1
`_______________
`
`
`
`Before KEVIN F. TURNER, JAMES A. TARTAL,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`IPR2016-00745
`Patent 7,764,231 B1
`
`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 claim 17 of U.S. Patent No. 7,764,231 B1 (Ex. 1001,
`“the ’231 Patent”). Concurrently, Petitioner filed a Motion for Joinder
`(Paper 3, “Mot. for Joinder”), requesting that we join this proceeding to
`IPR2015-01687, in which we instituted inter partes review of claims 20 and
`25 of the ’231 Patent, but declined to institute as to claim 17.
`TracBeam, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”). Patent Owner also filed an Opposition to the
`Motion for Joinder (Paper 8, “Opp. to Mot. for Joinder”). Thereafter,
`Petitioner filed a Reply (Paper 10) in support of its Motion for Joinder.
`Upon consideration of the Petition and Preliminary Response, we
`exercise our discretion, under 35 U.S.C. § 325(d), to deny institution of inter
`partes review as to claim 17.
`
`B. The ’231 Patent
`The ’231 Patent describes location systems for wireless
`telecommunication infrastructures. Ex. 1001, Abstract. According to the
`’231 Patent, the location techniques are useful for 911 emergency calls,
`vehicle tracking and routing, and location of people and animals. Id. at
`Abstract, 12:17–23.
`Figure 4, reproduced below, illustrates an embodiment:
`
` 2
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`IPR2016-00745
`Patent 7,764,231 B1
`
`
`
`Figure 4, reproduced above, is an overall view of a wireless radio location
`network architecture. Id. at 21:34–35. The network includes a plurality of
`mobile stations (“MS”) 140, 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 24:6–42. 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.
`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 28:1–
`10.
`
` 3
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`IPR2016-00745
`Patent 7,764,231 B1
`Location center 142 determines a location of a target MS 140. Id. at
`25:26–30, 37:16–18. 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, 9:13–
`28, 11:13–62, 66:52–58. 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 12:52–
`13:36, 37:66–38:6. The most likely location can be a composite of the
`estimates. Id. at 13:30–36, 66:20–31.
`Location estimates can be provided to location requesting
`applications, such as 911 emergency, police and fire departments, taxi
`services, etc. Id. at 8:56–64, 13:25–28.
`
`Claim 17, the only claim challenged in the Petition, is reproduced
`below:
`
`17. A method for locating a wireless mobile station,
`comprising performing the following steps by computational
`equipment:
`(A1) receiving location information for the mobile station
`by the steps (a) and (b) following:
`(a) first obtaining a first instance of the location
`information when supplied with signal time delay data obtained
`from wireless signal data received by the mobile station from a
`satellite, wherein a geographic range corresponding to the signal
`time delay data is used to determine the first instance;
`
` 4
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`IPR2016-00745
`Patent 7,764,231 B1
`wherein communication between the mobile station and at
`least one terrestrial transceiver is used to improve said first
`instance; and
`(b) second obtaining a second instance of the location
`information of the mobile station when supplied with second data
`indicative of time delays of wireless signals transmitted between
`the mobile station and a plurality of terrestrial transceivers
`cooperatively linked together for use in two way communication
`with the mobile station, wherein at least one of (i) and (ii)
`following are used for obtaining the second instance: (i) a
`representation of a locus of locations having substantially a same
`time difference of arrival for wireless signals communicated
`between: the mobile station, and each of at least two of the
`transceivers, and (ii) an area obtained by a correspondence
`between surveyed wireless signaling characteristics of the area,
`and wireless signals communicated between the mobile station
`and the transceivers;
`wherein the second instance does not depend on a
`geographical location of the mobile station obtained from
`information indicative of a distance between the mobile station
`and at least one of the one or more satellites;
`(A2) determining resulting location information, for each
`of one or more locations of said mobile station, using at least one
`of: a first value obtained from the first instance, and a second
`value obtained from the second instance;
`(A3) outputting said resulting location information for
`each of the one or more locations;
`wherein: the first value is used to obtain the resulting
`information for one of the locations, and the second
`value is used to obtain the resulting information for
`one of the locations.
`
`
`C. Related Matters; IPR2015-01687
`The ’231 Patent is the subject of several lawsuits filed in several
`United States District Courts. Pet. 11; Paper 5, 1–5. The ’231 Patent also is
`
` 5
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`IPR2016-00745
`Patent 7,764,231 B1
`the subject of T-Mobile US, Inc. v. TracBeam, LLC, Case IPR2015-01681
`(PTAB) and T-Mobile US, Inc. v. TracBeam, LLC, Case IPR2015-01687
`(PTAB). Pet. 2; Paper 5, 2. Various related patents also are the subjects of
`other proceedings before the district courts and the Board. Paper 5, 1–5.
`Most pertinent to this proceeding is T-Mobile US, Inc. v. TracBeam,
`LLC, Case IPR2015-01687 (PTAB) (“1687”). In the Decision on Institution
`in 1687, we instituted inter partes review as to claims 20 and 25, but denied
`institution as to claim 17 (the claim challenged in the instant proceeding).
`1687, Paper 10 (“1687-Dec.”). Petitioner seeks to join this proceeding to
`1687. See Mot. for Joinder.
`In 1687, as it does here, Petitioner contended that claim 17 would
`have been obvious over Loomis1 and Wortham.2 See Paper 1(“1687-Pet.),
`34–44. As summarized in the Decision on Institution for 1687, Loomis
`describes a hybrid location determining (“LD”) system that includes an
`outdoor LD unit that determines location using GPS technology and a radio
`LD unit that determines location using FM radio technology. 1687-Dec. 9–
`11. In order to determine a location estimate from the FM signals it
`receives, Loomis’s radio LD unit must first know the relative phases of the
`FM signals. Id. at 11. For those phases, the radio LD unit relies on
`determinations from the outdoor (GPS) LD unit. Id. at 10–11. Wortham
`describes a differential positioning system for a mobile communication
`(cellular telephone) network in which GPS signals are evaluated at a fixed
`station with known (surveyed) coordinates to generate correction data. Id. at
`12–13. The correction data are sent via the mobile communication system to
`
`
`1 U.S. Patent No. 5,936,572 (issued Aug. 10, 1999) (Ex. 1008).
`2 U.S. Patent No. 6,748,226 B1 (issued June 8, 2004) (Ex. 1009).
`
` 6
`
`
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`IPR2016-00745
`Patent 7,764,231 B1
`mobile receivers for use in correcting the GPS coordinate determinations
`made at the mobile receivers. Id. Petitioner argued that a skilled artisan
`would have modified Loomis to replace its FM terrestrial location
`capabilities with cellular-based signals, as would be transmitted by
`Wortham’s transmitter sites. Id. at 13–14.
`In 1687, Petitioner relied on Loomis to show “wherein the second
`instance does not depend on a geographical location of the mobile station
`obtained from information indicative of a distance between the mobile
`station and at least one of the one or more satellites,” as recited in claim 17,
`arguing that Loomis’s outdoor LD and radio LD units are independent of
`one another. 1687–Pet. 42. We determined that the respective position
`information generated by the radio LD unit and outdoor LD unit are not
`independent, because the radio LD unit’s position information depends on
`the outdoor LD unit’s determination of phase, which depends on the outdoor
`LD unit’s computation of GPS coordinate position information. 1687-Dec.
`16–18. Accordingly, Petitioner did not show a reasonable likelihood of
`success in showing that claim 17 would have been obvious over Loomis and
`Wortham. Petitioner did not request rehearing of that determination.
`
`D. The Asserted Ground
`Petitioner contends that claim 17 would have been obvious, under
`35 U.S.C. § 103, over Loomis and Wortham. Pet. 14. Although Petitioner
`cites the same references, Petitioner advances a theory as to how a skilled
`artisan would have interpreted and applied Loomis and Wortham. Petitioner
`contends that a skilled artisan would have used a stationary FM signal
`monitor, as in Loomis’s description of the prior art, rather than Loomis’s
`
` 7
`
`
`
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`IPR2016-00745
`Patent 7,764,231 B1
`outdoor LD unit, to supply phase information to the radio LD unit. Pet. 29–
`31.3 See also id. at 33–39 (reiterating its view of Loomis and the alleged
`obviousness of the combination of Loomis and Wortham).
`Petitioner contends that its application of Loomis and Wortham
`merely “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” (Pet. 8) and introduces
`“nominal additional subject matter” (id. at 9).
`
`E. One Year Bar Under 35 U.S.C. § 315(b) and Joinder
`According to 35 U.S.C. § 315(b):
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date
`on which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringement of the
`patent. The time limitation set forth in the preceding sentence
`shall not apply to a request for joinder under subsection (c).
`Patent Owner contends that the Petition is barred by Patent Owner’s
`complaint (Ex. 2003) in the ’678 litigation, allegedly served on Petitioner on
`August 11, 2014, more than one year prior to the March 11, 2016, filing date
`of the Petition. Prelim. Resp. 2–5.
`Petitioner argues that the Petition is not barred by a prior lawsuit filed
`by Patent Owner against MetroPCS and TeleCommunication Systems, Inc.,
`arguing that “[t]hose lawsuits were dismissed without prejudice, and thus are
`treated as if they had never been filed.” Pet. 13. Here, Petitioner refers to
`
`
`3 Loomis criticizes this prior art technique (Ex. 1008, 4:9–17) and describes
`using the outdoor LD unit to remedy such deficiencies as “an important
`feature of the invention” (id. at 7:31–38).
`
` 8
`
`
`
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`IPR2016-00745
`Patent 7,764,231 B1
`the ’96 litigation. Id. (citing Ex. 1019). Nevertheless, Petitioner states that
`“Patent Owner TracBeam is currently asserting the ’231 Patent . . . against
`Petitioner T-Mobile in” the ’678 litigation. Id. at 11. Petitioner does not
`appear to address whether the ’678 litigation bars the Petition.
`Petitioner also has filed a motion to join the instant Petition to the
`1687 proceeding. Mot. for Joinder. Petitioner argues that the Petition is
`timely by virtue of its Motion for Joinder. Pet. 12–13; see also 35 U.S.C.
`§ 315(b) (“The time limitation set forth in the preceding sentence shall not
`apply to a request for joinder under subsection (c).”).
`Joinder, however, is appropriate only when the underlying petition
`sought to be joined warrants institution. According to 35 U.S.C. § 315(c)
`(emphasis added):
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`As explained below, we have considered the Petition and the Preliminary
`Response and determine that the Petition does not warrant the institution of
`an inter partes review. Accordingly, we do not reach whether the Petition is
`time barred or whether joinder otherwise would be appropriate.
`Petitioner’s Motion for Joinder is denied as moot.
`
`
`II. ANALYSIS
`Institution of inter partes review is subject to Board discretion. “At
`any time prior to institution of inter partes review, the Board may deny
`
` 9
`
`
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`IPR2016-00745
`Patent 7,764,231 B1
`some or all grounds for unpatentability for some or all of the challenged
`claims. Denial of a ground is a Board decision not to institute inter partes
`review on that ground.” 37 C.F.R. § 42.108(b). In particular, “[i]n
`determining whether to institute or order a proceeding under this chapter,
`chapter 30, or chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially the same
`prior art or arguments previously were presented to the Office.” 35 U.S.C.
`§ 325(d). This is an instance in which Petitioner presents the same prior art
`in a second petition along with arguments to correct errors in a first petition.
`Previous panels of this Board have expressed concern with permitting
`a petitioner to file an inadequate first petition and subsequently allowing the
`petitioner to correct errors in the first petition through the filing of a second
`petition. For example, in ZTE Corp. v. ContentGuard Holdings Inc., Case
`IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12), slip op. at 5–6, a panel
`explained:
`The Board is concerned about encouraging, unnecessarily, the
`filing of petitions which are partially inadequate. A decision to
`institute review on some claims should not act as an entry ticket,
`and a how-to guide, for the same Petitioner who filed an
`unsuccessful joinder motion, and is outside of the one-year
`statutory period, for filing a second petition to challenge those
`claims which it unsuccessfully challenged in the first petition.
`Similarly, another panel denied a petition with grounds that served as
`“second bites at the apple” and used a prior decision “as a roadmap to
`remedy [the first petition’s] prior, deficient challenge,” explaining that
`“[a]llowing similar, serial challenges to the same patent, by the same
`petitioner, risks harassment of patent owners and frustration of Congress’s
`intent in enacting the Leahy-Smith America Invents Act.” Butamax
`
`
`10
`
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`IPR2016-00745
`Patent 7,764,231 B1
`Advanced Biofuels LLC, v. Gevo, Inc., Case IPR2014-00581, 2014 WL
`5299385, at *6 (PTAB Oct. 14, 2014) (Paper 8). Patent Owner contends that
`we should follow this guidance and deny the Petition. Prelim. Resp. 8–20.
`We agree with Patent Owner that this is a factor that weighs against
`institution of the Petition.
`Petitioner (Pet. 5) contends that the Petition is justified by three
`factors:
`(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 ’231 Patent, that was not
`available when IPR proceeding IPR2015-01687 was 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.
`As to its first factor, Petitioner argues that, in an act of gamesmanship,
`Patent Owner asserted over 140 claims against Petitioner in the co-pending
`district court litigation and dropped the majority of those claims only after
`Petitioner had filed its initial IPR petitions. Id. at 5–6. Petitioner argues that
`“[t]his gamesmanship made it unrealistic for the initial IPR petitions to
`proactively address every conceivable argument from the Patent Owner.”
`Id. at 5. Patent Owner disputes Petitioner’s accusation of gamesmanship and
`argues that it properly followed a procedure set by the District Court for
`electing a reasonable number of claims. Prelim. Resp. 20–21. Patent Owner
`then follows up with its own gamesmanship accusations concerning the
`timing of Petitioner’s submissions of invalidity contentions in district court.
`Id. at 22–24.
`We are not persuaded by Petitioner’s argument. In 1687, Petitioner
`devoted a significant portion of its petition to addressing independent claim
`
`11
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`IPR2016-00745
`Patent 7,764,231 B1
`17 on the same prior art as asserted here. 1687-Pet. 34–44. Even if there
`was gamesmanship in the district court litigation, Petitioner was
`unsuccessful as to claim 17 in 1687 not because it failed to anticipate an
`argument made by Patent Owner, but because although Petitioner provided
`that the first instance of the location information was not dependent on the
`second, no adequate argument or evidence was presented to show the
`converse. 1687-Dec. 17–19.
`For its second justification, Petitioner argues that, since filing the
`petition in 1687, Petitioner deposed Dr. Dennis Dupray, a named inventor on
`the ’231 Patent, who allegedly admitted that the limitation of claim 17 we
`found not established by Petitioner was, in fact, known in the art. Pet. 6–7.
`According to Petitioner, “Dr. Dupray’s testimony confirms what was already
`well known in the art: that multiple, independent location techniques can
`output location estimates that are independent of each other.” Id. at 7. In
`response, Patent Owner argues that Dr. Dupray was not testifying about
`Loomis and Wortham, the cited prior art. Prelim. Resp. 24–25.
`We are not persuaded by Petitioner’s second justification. Dr. Dupray
`testified that cell tower triangulation “may or may not be” dependent on
`GPS “in certain circumstances” and that he believed there existed prior art
`techniques for cell tower triangulation not dependent on GPS. Ex. 1027,
`332:5–334:12. To the extent that this testimony is relevant at all, Petitioner
`does not explain persuasively how it bears on whether the prior art
`references asserted by Petitioner (in the instant Petition or in the petition in
`1687) would have taught such a feature.
`For its third justification, Petitioner argues that “it would be against
`the public’s interest not to institute inter partes review of this clearly invalid
`
`
`12
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`IPR2016-00745
`Patent 7,764,231 B1
`claim.” Pet. 7. Patent Owner responds that it is against public interest to
`expend the Board’s limited resources on petitions that merely attempt to fix
`issues that were not presented adequately in an earlier petition. Prelim.
`Resp. 26–27 (citing ATopTech, Inc. v. Synopsys, Inc., Case IPR2015-00760,
`slip op. at 8–9 (PTAB July 21, 2015) (Paper 14) (“[W]e are mindful that
`permitting second chances without constraint undermines judicial efficiency
`by expending the Board’s limited resources on issues that were not presented
`adequately the first time around”).
`We are not persuaded by Petitioner’s third justification. In 1687,
`Petitioner failed to establish a reasonable likelihood of prevailing with
`respect to the same prior art. While we do not reach whether the second
`Petition demonstrates a reasonable likelihood of prevailing on that art,
`Petitioner has not shown that claim 17 is so clearly unpatentable as to
`undermine public interest.
`We have considered Petitioner’s proffered justifications as well as
`Patent Owner’s concerns regarding allowing Petitioner to correct its first
`Petition through filing a second Petition advancing the same prior art. We
`exercise our discretion, under Section 325(d), to deny the Petition because
`“the same or substantially the same prior art . . . previously were presented
`to the Office.”
`
`
`III. CONCLUSION
`We exercise our discretion to deny the Petition under 35 U.S.C.
`§ 325(d). Because we deny the Petition, we deny Petitioner’s Motion for
`Joinder as moot.
`
`
`
`13
`
`
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`IPR2016-00745
`Patent 7,764,231 B1
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 325(d), an inter partes
`review is not instituted for claim 17 of U.S. Patent No. 7,764,231 B1; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied
`as moot.
`
`
`
`
`
`14
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`
`
`IPR2016-00745
`Patent 7,764,231 B1
`PETITIONER:
`
`Brian W. Oaks
`BAKER BOTTS, LLP
`brian.oaks@bakerbotts.com
`
`Douglas M. Kubehl
`BAKER BOTTS, LLP
`doug.kubehl@bakerbotts.com
`
`Chad C. Walters
`BAKER BOTTS, LLP
`chad.walters@bakerbotts.com
`
`Ross G. Culpepper
`BAKER BOTTS, LLP
`ross.culpepper@bakerbotts.com
`
`PATENT OWNER:
`
`Sean Luner
`DOVEL & LUNER LLP
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
`
`
`
`15
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