throbber
Paper 39
`Trials@uspto.gov
`Date: March 2, 2022
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LBT IP I LLC,
`Patent Owner.
`____________
`
`IPR2020-01189
`Patent 8,497,774 B2
`____________
`
`
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1, 4–6, 8, 10, 13, and 15 (“the challenged
`claims”) of U.S. Patent No. 8,497,774 B2 (Ex. 1001, “the ’774 patent”).
`LBT IP I LLC (“Patent Owner”) filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). Taking into account the arguments presented in Patent
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`Owner’s Preliminary Response, we determined that the information
`presented in the Petition established that there was a reasonable likelihood
`that Petitioner would prevail with respect to its unpatentability challenges.
`Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 4,
`2021, as to all challenged claims and all grounds of unpatentability. Paper 9
`(“Dec. on Inst.”).
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 17, “PO Resp.”), and Petitioner filed a Reply to the Patent
`Owner Response (Paper 25, “Pet. Reply”). Patent Owner also filed a
`Sur-reply. Paper 31 (“PO Sur-reply”).
`In addition, Patent Owner filed a contingent motion to amend
`(Paper 16, “MTA”) proposing to substitute claims 20, 23–25, 27, 29, 32, and
`341 for claims 1, 4–6, 8, 10, 13, and 15, respectively, if we are to determine
`claims 1, 4–6, 8, 10, 13, and 15 unpatentable. Petitioner filed an opposition
`to the motion to amend. Paper 26 (“MTA Opp.”). On September 24, 2021,
`pursuant to Patent Owner’s request (see MTA 2), we issued Preliminary
`Guidance on Patent Owner’s motion to amend. Paper 28 (“PG”). Patent
`Owner then filed a reply in support of its motion to amend (Paper 30 (“MTA
`Reply”)), to which Petitioner filed a sur-reply (Paper 36 (“MTA
`Sur-reply”)).
`An oral hearing was held on December 8, 2021, and a transcript of the
`hearing is included in the record. Paper 38 (“Tr.”).
`Petitioner filed Declarations of Scott Andrews with its Petition
`(Ex. 1003) and with its Reply and opposition to the motion to amend
`
`
`1 See infra § III.B.2.
`
`2
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`(Ex. 1077). Both parties filed a transcript of the deposition of Mr. Andrews.
`Exs. 1068, 2003.
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1, 4–6, 8, 10, 13, and 15 of the ’774 patent. For the reasons discussed
`below, Petitioner has demonstrated by a preponderance of the evidence that
`claims 1, 4–6, 8, 10, 13, and 15 of the ’774 patent are unpatentable. We also
`deny Patent Owner’s motion to amend.
`
`
`A.
`
`B.
`
`I. BACKGROUND
`Real Parties-in-Interest
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 72.
`Patent Owner identifies LBT IP I LLC as the real party-in-interest. Paper 3,
`2; Paper 6, 2.
`
`Related Proceedings
`The parties identify the following proceedings related to the
`’774 patent (Pet. 72; Paper 3, 2; Paper 6, 2):
`LBT IP I LLC v. Apple Inc., No. 1:19-cv-01245-UNA (D. Del. filed
`July 1, 2019); and
`IPR2020-01190, IPR2020-01191, IPR2020-01192, and
`IPR2020-01193, in which Petitioner challenges other patents owned by
`Patent Owner. We issue final written decisions in IPR2020-01190,
`IPR2020-01191, IPR2020-01192, and IPR2020-01193 concurrently with
`this Decision.
`
`
`3
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`

`IPR2020-01189
`Patent 8,497,774 B2
`The ’774 patent
`C.
`The ’774 patent is directed to location and tracking communication
`systems. Ex. 1001, 1:33–34. Figure 1 of the ’774 patent is reproduced
`below.
`
`
`
`Figure 1 depicts a schematic of tracking device 100, which contains
`electronic components 101 such as transceiver 102, signal processing
`circuitry 104 (e.g., a microprocessor or other signal logic circuitry), and
`accelerometer 130. Id. at 4:62–64, 6:54–57. Location tracking circuitry 114
`(e.g., global positioning system (GPS) circuitry) calculates location data
`received and sends the data to signal processing circuitry 104. Id. at 7:17–
`19. Signal detecting circuitry 115 detects and measures signal power level.
`Id. at 7:22–23. Battery level monitor 116 detects a battery level of
`battery 118. Id. at 7:25–28.
`
`4
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`IPR2020-01189
`Patent 8,497,774 B2
`Tracking device 100 periodically checks availability of a GPS signal
`by performing a GPS signal acquisition to determine if a receive
`communication signal is above a first signal level. Id. at 8:7–10. Location
`tracking circuitry 114 or transceiver 102 may be placed in a sleep or standby
`mode to conserve a battery level of battery 118. Id. at 8:4–8. Electronic
`tracking device 100 may resume GPS signal acquisition using GPS satellites
`when the acquired receive communication signal level is above the first
`signal level. Id. at 8:10–16.
`Accelerometer 130 may also activate if a power level of the receive
`communication signal (e.g., GPS signal) is insufficient for processing. Id. at
`10:47–49. In this case, processing unit 104 computes current location
`coordinates using acceleration measurements. Id. at 10:53–54. When the
`receive communication signal again becomes sufficient for processing,
`accelerometer 130 is deactivated and location tracking circuitry 114 is
`activated. Id. at 10:58–67. In this case, processing unit 104 resumes the
`calculation of location coordinates from the receive communication signal.
`Id.
`
`5
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`

`IPR2020-01189
`Patent 8,497,774 B2
`Figure 4 of the ’774 patent is reproduced below.
`
`
`
`Figure 4, above, depicts screen display 400 of a personal communication
`device including a user definable adjustable power level monitor for an
`electronic tracking device. Id. at 5:5–7, 11:2–4, 11:12–17. Battery level
`monitor 116 measures in real-time battery charge level 406 of battery 118
`and predicts estimated remaining battery charge life 414 in response to
`battery charge level 406. Id. at 11:22–25, 13:52–58. Battery level
`monitor 116 also adjusts the power level applied to location tracking
`circuitry 114 or transceiver 102 responsive to one or more signal levels. Id.
`at 13:52–58.
`A local battery power adjustment mechanism generates in
`substantially real-time an updated set of network communication signaling
`protocols including, for example, update rate 446 (e.g., refresh rate) of
`
`6
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`

`IPR2020-01189
`Patent 8,497,774 B2
`location coordinate packets. Id. at 11:31–36. Update rate 446 consists of a
`request rate of location coordinate packets by the target host and/or a listen
`rate of location coordinate packets by the portable electronic tracking device.
`Id. at 11:36–41. The local battery power adjustment mechanism includes
`user-adjustable slider 4322 to graphically display in substantially real-time
`the trade-off relationships between remaining battery charge level 414 and
`update rate 446 of location coordinate packets. Id. at 11:53–57. The user
`may select a multitude of threshold values via slider 432 to intermittently
`activate or deactivate location tracking circuitry 114 in order to conserve the
`power of battery 118. Id. at 13:58–67. For example, the user may adjust
`slider 432 to choose a range of values between a lower update rate 446 (and
`less battery usage) and a higher update rate 446 (and more battery usage).
`Id. at 11:53–57, Fig. 4. This results in “an appropriate update[d] set of
`network communication signaling protocols to achieve a desired user
`defined battery operating environment, e.g., obtain optimal battery life,
`obtain optimal update rate, [and the] tradeoffs between them.” Id. at 11:58–
`63. This further may result in the local battery power adjustment mechanism
`communicating a message to activate or deactivate a portion of the
`transceiver circuitry, processor circuitry, or location tracking circuitry. Id. at
`11:44–53.
`The ’774 patent issued from Application No. 12/419,451 (“the ’451
`application”) filed on April 7, 2009, which is a continuation-in-part of six
`applications. Ex. 1001, codes (21), (63). As discussed below, Petitioner
`
`
`2 Slider 432 is also called “user adjustable screen icon 432,” “on-line user
`adjustable cursor display 432,” and “active display 432” in the Specification
`of the ’774 patent. See, e.g., Ex. 1001, 11:53–57, 13:13–18, 13:58–67.
`
`7
`
`

`

`D.
`
`IPR2020-01189
`Patent 8,497,774 B2
`applies the April 5, 2007, filing date of two of these six applications (i.e., the
`earliest possible effective filing date) for qualifying the asserted references
`as prior art. See Pet. 3, 7–8.
`
`Illustrative Claim
`Of the challenged claims of the ’774 patent, claims 1 and 8 are
`independent. Claims 4–6 depend directly or indirectly from claim 1, and
`claims 10, 13, and 15 depend from claim 8. Claim 1 is illustrative of the
`challenged claims and recites:
`1.
`A portable electronic tracking device to monitor location
`coordinates of one or more individuals and objects using a
`satellite navigation system, the portable electronic tracking
`device comprising:
`a battery having a battery charge level;
`transceiver circuitry;
`processor circuitry;
`a battery power monitor to measure in real-time the
`battery charge level and to make a prediction of an estimated
`remaining battery charge level in response to the battery charge
`level;
`
`local battery power adjustment mechanism to generate in
`substantially real-time an updated set of network
`communication signaling protocols associated with at least one
`of a request rate of location coordinate packets to be
`communicated to a target host and a listen rate of the location
`coordinate packets from a satellite navigation system, the
`updated set of network communication signaling protocols
`having a value that is responsive to a user input request;
`wherein the local battery power adjustment mechanism
`actives or deactivates at least one portion of the transceiver
`
`8
`
`

`

`E.
`
`IPR2020-01189
`Patent 8,497,774 B2
`circuitry or the processor circuitry to conserve the battery
`charge level in response to the value.
`Ex. 1001, 15:46–16:2.
`
`Prior Art
`Petitioner relies on the following prior art:
`Japanese Unexamined Patent Application Publication No.
`JP 2004-37116A, published Feb. 5, 2004
`(Ex. 1004,
`“Sakamoto”);3
`Applicants’ Admitted Prior Art (Ex. 1001, 11:22–30,
`“AAPA”);
`U.S. Patent No. 5,845,142, filed Aug. 29, 1997, issued
`Dec. 1, 1998 (Ex. 1011, “Hayasaka”).
`
`
`F.
`
`The Instituted Grounds
`We instituted inter partes review of claims 1, 4–6, 8, 10, 13, and 15 of
`the ’774 patent on the following grounds (Dec. on Inst. 29), which are all the
`grounds presented in the Petition (Pet. 6):
`Claims Challenged
`35 U.S.C. §
`1, 4–6, 8, 10, 13, 15
`103(a)4
`1, 4–6, 8, 10, 13, 15
`103(a)
`
`References/Basis
`Sakamoto
`Sakamoto, AAPA
`
`
`3 Sakamoto is a Japanese-language publication (Ex. 1004, 36–49, 58) that
`was filed with an English-language translation (id. at 1–19, 21–34, 52–56)
`and declarations attesting to the accuracy of the translation (id. at 20, 50).
`Our citations to Sakamoto herein refer to the translation.
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, and 112.
`Because the ’774 patent was filed before March 16, 2013 (the effective date
`of the relevant amendments), the pre-AIA versions of §§ 102, 103, and 112
`apply.
`
`9
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`Claims Challenged
`1, 4–6, 8, 10, 13, 15
`
`
`
`35 U.S.C. §
`103(a)
`
`References/Basis
`Sakamoto, Hayasaka
`
`II. ANALYSIS
`
`A.
`
`Legal Standards
`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 matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved 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) where in evidence, so-called secondary
`considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
`559, 562 (CCPA 1978)).
`
`Level of Ordinary Skill in the Art
`Citing testimony from Mr. Andrews, Petitioner contends a person of
`ordinary skill in the art (or “POSITA”) “would have had a bachelor’s degree
`in Electrical Engineering, Computer Engineering, Computer Science, or an
`
`B.
`
`
`5 The trial record does not include any evidence of secondary considerations
`of nonobviousness.
`
`10
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`equivalent degree, with at least two years of experience in GPS navigation,
`portable tracking devices, or related technologies.” Pet. 3 (citing Ex. 1003
`¶¶ 29–30). For purposes of our Decision on Institution, we adopted
`Petitioner’s definition of the level of ordinary skill in the art without the
`qualifier “at least.” Dec. on Inst. 10. Patent Owner states that it adopts this
`definition. MTA 16. Thus, we discern no reason to change the level of
`ordinary skill in the art applied in this Final Written Decision. Accordingly,
`a person of ordinary skill in the art would have had a bachelor’s degree in
`Electrical Engineering, Computer Engineering, Computer Science, or an
`equivalent degree, with two years of experience in GPS navigation, portable
`tracking devices, or related technologies. We determine that this definition
`comports with the level of skill necessary to understand and implement the
`teachings of the ’774 patent and the asserted prior art.
`
`Claim Interpretation
`In an inter partes review, we construe each claim “in accordance with
`the ordinary and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the
`same as that of a district court. See id. Under the standard applied by
`district courts, claim terms are generally given their plain and ordinary
`meaning as would have been understood by a person of ordinary skill in the
`art at the time of the invention and in the context of the entire patent
`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc). “There are only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`
`C.
`
`11
`
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`

`IPR2020-01189
`Patent 8,497,774 B2
`the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`“Multitude”
`1.
`Claim 8 recites a “power level comprising a multitude of threshold
`values.” Ex. 1001, 16:56–57. In its obviousness analysis, Petitioner relies
`on Sakamoto for teaching two such threshold values. See Pet. 50–51. In the
`Preliminary Response, Patent Owner contended that Petitioner’s showing of
`two threshold values was not sufficient to teach the recited “multitude” of
`claim 8. Prelim. Resp. 16–17. We construed “multitude” to include two
`thresholds for purposes of our Decision on Institution, and we encouraged
`the parties to further address the interpretation of the term during trial. Dec.
`on Inst. 12.
`In post-institution briefing, Patent Owner contends that “a multitude
`in the context of the ’774 Patent is necessarily more than two,” i.e., three or
`more. PO Resp. 12–17; PO Sur-reply 2–4. Petitioner asks us to maintain
`our construction that a “multitude” includes two. Pet. Reply 1–10. We now
`consider the parties’ arguments and the evidence of record pertaining to the
`construction of “multitude.”
`At the outset, we note that an exemplary embodiment in Figure 4 of
`the ’774 patent depicts 5–7 thresholds. See Ex. 1001, 13:58–67, Fig. 4
`(432). In our Decision on Institution, we found that these 5 or 7 thresholds
`are not a benchmark for what constitutes a “multitude” in claim 8. Dec. on
`Inst. 11 (citing Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371
`(Fed. Cir. 2014)). During the course of trial, both parties acknowledged the
`
`12
`
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`

`IPR2020-01189
`Patent 8,497,774 B2
`exemplary embodiment in Figure 4 (PO Resp. 16; Pet. Reply 8; PO
`Sur-reply 5–7), but neither party contends that the 5–7 thresholds depicted
`therein should limit our interpretation of “multitude.” Thus, we maintain our
`determination from the Decision on Institution that the embodiment of
`Figure 4 with 5–7 thresholds constitutes a non-limiting example.
`Patent Owner contends that another portion of the Specification of the
`’774 patent supports an interpretation of “multitude” as being three or more.
`PO Sur-reply 6–7. Specifically, Patent Owner cites the following passage:
`“Advantageously as compared to conventional tracking devices, user input
`request 430 adjusts value 419 to select an appropriate update set of network
`communication signaling protocols to achieve a desired user defined battery
`operating environment, e.g., obtain optimal battery life, obtain optimal
`update rate, tradeoffs between them.” Id. (quoting Ex. 1001, 11:58–67)
`(emphasis added). Patent Owner contends this language “clearly discloses
`that a threshold value may be any value along a line between two end points,
`including the end points (i.e., ‘obtain optimal battery life’ as one end point,
`‘obtain optimal update rate’ as another end point, and ‘tradeoffs between
`them’ as any value along the line).” Id. at 7. At oral argument, Patent
`Owner also emphasized that the plural “tradeoffs” supported its
`interpretation, because values between the endpoints allegedly represent
`tradeoffs. See Tr. 29:20–32:13. Thus, Patent Owner interprets “the number
`of available values” as being “at least three (i.e., each end point and the
`value depicted as 419).” Id. Petitioner disputes Patent Owner’s position
`because “the ’774 Specification establishes, at best, only 5–7 thresholds.”
`Pet. Reply 8.
`
`13
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`

`IPR2020-01189
`Patent 8,497,774 B2
`We do not agree with Patent Owner that the Specification’s statement
`about tradeoffs between “optimal battery life” and “optimal update rate”
`necessarily requires a spectrum of at least three threshold values (i.e., two
`endpoints and at least one value between them). If anything, this statement
`supports the view that such tradeoffs can be made between as few as two
`points: an endpoint where less updates are traded for better battery life, and
`an endpoint where worse battery life is traded for more updates. See
`Ex. 1001, Fig. 4 (slider 432). We also do not ascribe any significance to the
`plural “tradeoffs” in Patent Owner’s cited statement, because every point in
`such a spectrum would involve its own tradeoffs between battery life and
`update frequency. Thus, we agree with Petitioner that the Specification does
`not support Patent Owner’s interpretation of a multitude as necessarily being
`three or more. We also consider the Specification’s statement about
`“obtain[ing] optimal battery life, obtain[ing] optimal update rate, [and the]
`tradeoffs between them” (Ex. 1001, 11:58–63) to at least be consistent with
`the notion that “multitude” means two or more in the context of the
`’774 patent.
`Patent Owner also contends that the prosecution history of the
`application that issued as the ’774 patent supports an interpretation of
`“multitude” as being three or more. Specifically, Patent Owner cites the
`patentees’ amendment of claim 8,6 which Patent Owner alleges was made to
`overcome a rejection of the claim based on U.S. Patent No. 7,826,968
`(Ex. 2011, “Huang”). PO Resp. 14 (citing Ex. 1002, 270, 297–98). Patent
`Owner further contends that Huang discloses “two preset speed-of-
`
`
`6 Prosecution claim 8 issued as claim 8 in the ’774 patent, so we refer to it
`simply as “claim 8.”
`
`14
`
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`

`IPR2020-01189
`Patent 8,497,774 B2
`movement thresholds for adjusting the frequency of positioning updates.”7
`Id. at 14–16 (citing Ex. 2011, 2:43–52, 2:55–3:8). According to Patent
`Owner, the patentees made the amendment “in order to overcome prior art
`that disclosed two thresholds,” so “the amendment is intrinsic evidence of
`the patentee[s’] clear intent to define ‘multitude’ as more than two.” Id. at
`16; see also PO Sur-reply 3–4 (same argument).
`Petitioner notes that the patentees amended claim 8 to include the
`limitations of prosecution claim 17, which the patent examiner indicated was
`allowable. Pet. Reply 3–4 (citing Ex. 1002, 297–99). Petitioner argues that
`the added language from prosecution claim 17 “includes at least four distinct
`limitations: (1) a multitude of thresholds; (2) determined by a user or system
`administrator; (3) to intermittently activate or deactivate the location
`tracking circuitry to conserve power of the charging unit; and (4) in response
`to the estimated charge level of the charging unit.” Id. Petitioner further
`notes that the patentees “did not present any substantive arguments
`distinguishing this amendment over Huang, but only relied on the
`Examiner’s indication that claim 17 was allowable.” Id. at 4. For these
`reasons, Petitioner contends that “any alleged prosecution disclaimer is
`‘ambiguous, or even amenable to multiple reasonable interpretations.’” Id.
`at 3, 6–7 (quoting Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045
`(Fed. Cir. 2016)).
`We agree with Petitioner. First, the patentees added the limitations of
`prosecution claim 17 (and intervening prosecution claim 16) after the patent
`
`
`7 Petitioner disputes that Huang teaches only two thresholds. Pet. Reply 5–
`6. We need not resolve this dispute because we dispose of the instant
`prosecution history argument based on other grounds.
`
`15
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`

`

`IPR2020-01189
`Patent 8,497,774 B2
`examiner objected to prosecution claim 17 “as being dependent upon a
`rejected base claim, but . . . allowable if rewritten in independent form
`including all of the limitations of the base claim and any intervening
`claims.” Ex. 1002, 271–72. The patentees’ amendment rewrote prosecution
`claim 17 in independent form, which included base claim 8. Id. at 292–94,
`297–98. The patentees made no arguments relative to the previous rejection
`of claim 8 (based on Huang), at which time claim 8 did not include the
`additional limitations of prosecution claims 16 and 17. See id. This
`undermines Patent Owner’s suggestion that the amendment was made to
`overcome Huang. Second, we agree with Petitioner that, even if we were to
`consider the amendment of claim 8 to be responsive to the Huang rejection,
`the patentees’ addition of multiple different limitations to claim 8 (Ex. 1002,
`297; Pet. Reply 3) does not make it “clear and unmistakable” that the
`amendment was directed to and disclaimed devices with two thresholds. 3M
`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir.
`2013). Thus, we do not find Patent Owner’s cited prosecution history
`supports a construction of “multitude” as being three or more.
`Patent Owner additionally argues that we should rely on evidence of
`the plain and ordinary meaning of “multitude” from contemporaneous
`dictionaries only in the sense that it means “a large number or amount.” PO
`Resp. 17 (citing Ex. 3001, 4; Ex. 3002, 4). As such, Petitioner cites
`“synonyms for ‘multitude’ [that] include ‘host,’ ‘legion,’ and ‘army,’ all of
`which ‘denote a very great number of people or things.’” Id. (citing
`Ex. 3001, 3). Petitioner contends that we should interpret “multitude” as
`synonymous with “plurality” based on “substantially identical dictionary
`definitions for the two terms and one dictionary that defined ‘plurality’ as
`
`16
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`

`IPR2020-01189
`Patent 8,497,774 B2
`‘multitude.’” Pet. Reply 1 (citing Dec. on Inst. 11–12). Petitioner also
`contends that none of the dictionary definitions in evidence “is consistent
`with drawing a line between two and three, or with drawing a line between
`two and ‘between five and seven.’” Id. at 9.
`In our Decision on Institution, we stated “that one dictionary . . .
`defines ‘plurality’ as ‘a multitude,’” which supports a construction of
`“multitude” as “at least two” in accordance with universally applied patent
`practice. Dec. on Inst. 12 (citing Ex. 3001, 4; SIMO Holdings Inc. v. Hong
`Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1377 (Fed. Cir.
`2021)). Patent Owner asks us to instead focus on definitions of multitude as
`being “a large number or amount.” PO Resp. 17. We note, however, that
`such definitions are inconsistent with Patent Owner’s position that a
`multitude of thresholds could encompass as few as three thresholds. In other
`words, we do not agree that three is consistent with a “host,” “legion,”
`“army,” or “a very great number of people or things.” Ex. 3001, 3. Nor has
`Patent Owner put forth evidence suggesting that two must be excluded from
`what is considered a multitude. Given the breadth of dictionary definitions
`in evidence, we find that this extrinsic evidence does not support limiting the
`definition of “multitude” to three or more as suggested by Patent Owner.
`Instead, we find that the breadth of the dictionary definitions in evidence
`supports our initial construction that “multitude” includes two. See, e.g., id.;
`Ex. 3002, 3.
`Finally, we consider Patent Owner’s argument based on the patent law
`maxim “that claims should be construed to preserve their validity.” Phillips
`415 F.3d at 1327; see also PO Sur-reply 3, 5 (citing same). Specifically,
`Patent Owner makes the following argument:
`
`17
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`IPR2020-01189
`Patent 8,497,774 B2
`Since a claim term must be construed in a way that preserves
`validity and Petitioner asserts that a construction of “multitude”
`as a number that is less than five lacks written description
`support, the only proper interpretation of “multitude” is “a
`number that is necessarily more than two”, which also
`encompasses a number larger than four.
`PO Sur-reply 6.
`We do not agree with Patent Owner’s argument. Phillips is clear that
`the “preserving validity” maxim is limited “to cases in which the [Board]
`concludes, after applying all the available tools of claim construction, that
`the claim is still ambiguous.” Phillips, 415 F.3d at 1327 (internal quotation
`omitted). At the oral hearing, Patent Owner conceded that “multitude” was
`not ambiguous; rather, Patent Owner only sought to invoke the maxim to the
`extent that we might agree with Petitioner’s claim construction arguments.
`Tr. 29:1–19. This undermines any suggestion that the term is ambiguous.
`Thus, just like the court in Phillips, we can construe “multitude” “without
`the need to consider whether one possible construction would render the
`claim invalid while the other would not.” Phillips, 415 F.3d at 1328.
`Having considered all the evidence of record, we discern no reason to
`change our initial determination that a “multitude” may include two. Thus,
`we maintain our determination from the Decision on Institution that a
`“multitude” includes two (as opposed to being no fewer than three). This
`construction is consistent with the counsel of our reviewing court that “it
`seems unlikely that a claim drafter would use a term of such biblical
`imprecision as ‘multitude’ if that term were meant to have an important
`restrictive function in the claim.” TiVo, Inc. v. EchoStar Commc’ns Corp.,
`516 F.3d 1290, 1297 (Fed. Cir. 2008).
`
`
`18
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`Other Terms
`2.
`We determine that no other terms require explicit construction. See,
`e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’
`. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999))).
`
`D. Obviousness Ground Based on Sakamoto
`Petitioner contends the subject matter of claims 1, 4–6, 8, 10, 13, and
`15 would have been obvious over Sakamoto. Pet. 8–55; Pet. Reply 10–19.
`Patent Owner disputes Petitioner’s contentions. PO Resp. 4–17; PO
`Sur-reply 8–14.
`
`Sakamoto
`1.
`Sakamoto is a Japanese patent application publication directed to the
`use of a GPS positioning system that includes a portable terminal and remote
`server. Ex. 1004, code (57), ¶ 18. Figure 1, reproduced below, is a diagram
`showing a position information communication terminal.
`
`19
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`
`Figure 1, above, depicts position information communication terminal 1,
`which includes GPS receiver 10, communication control unit 11 for mobile
`communications, GPS control unit 12, positioning control unit 13, man-
`machine interface control unit 14, satellite signal level detection unit 15,
`battery control unit 16, and communication line status control unit 17. Id.
`¶ 19. Battery control unit 16 constantly monitors the remaining battery
`level. Id. ¶ 28. Battery control unit 16 provides positioning control unit 13 a
`remaining battery life warning when the remaining battery amount falls
`below a preset threshold value. Id. ¶ 19.
`Satellite signal level detector 15 detects a level of the GPS signal
`received by GPS receiver 10 via GPS control unit 12. Id. When the signal
`level value is equal to or higher than a predetermined threshold value,
`positioning mode control unit 22 initiates a normal sensitivity positioning
`mode. Id. ¶ 38. Normal sensitivity positioning mode is a mode in which the
`
`20
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`GPS receiver is operated only when necessary. Id. ¶¶ 4–5, 19. When the
`signal level value is equal to or lower than a predetermined threshold value,
`positioning mode control unit 22 initiates a high sensitivity positioning
`mode. Id. ¶ 38. High sensitivity positioning mode is a mode in which the
`GPS receiver is operated constantly. Id. ¶¶ 4–5, 19. When the signal level
`value is equal to or lower than a threshold value associated with the inability
`to perform positioning, positioning mode control unit 22 stops the position
`search. Id. ¶ 38. A user may select among normal sensitivity positioning
`mode, high sensitivity positioning mode, and the power-off of terminal 1 via
`man-machine interface control unit 14. Id. ¶¶ 26, 28.
`Figure 2 of Sakamoto is reproduced below.
`
`
`
`Figure 2 depicts a GPS positioning system with position management/
`positioning server 2 connected to position information communication
`terminal 1 by a mobile communication network. Ex. 1004 ¶ 18. Terminal 1
`responds to a position request from terminal user A by showing the position
`of terminal 1 to terminal user A. Id. Server 2 responds to a position search
`request of terminal 1 from position searcher B with a position response. Id.
`Server 2 may also send a position search request message to terminal 1, and
`terminal 1 responds by sending a search response message including
`position information to server 2. See id. ¶¶ 31–35, Figs. 4, 5.
`
`21
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`Petitioner contends Sakamoto qualifies as prior art under 35 U.S.C.
`§ 102(b) based on its publication date. Pet. 7. Patent Owner does not
`contest the prior art status of Sakamoto. We determine that Sakamoto
`qualifies as prior art under 35 U.S.C. § 102(b) because Sakamoto’s
`publication date of February 5, 2004, is more than one year before the
`earliest effective filing date

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