Trials _ us to. 0V
`Tel: 571-272-7822
`
`Paper 9
`Date: March 4, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`
`Petitioner,
`
`V.
`
`LBT IP I LLC,
`Patent Owner.
`
`IPR2020-01 193
`
`Patent 8,421,619 B2
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 US. C. § 314
`
`Exhibit 2012
`Exhibit 20 12
`
`
`Tel: 571-272-7822
`
`Paper 9
`Date: March 4, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`
`Petitioner,
`
`V.
`
`LBT IP I LLC,
`Patent Owner.
`
`IPR2020-01 193
`
`Patent 8,421,619 B2
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 US. C. § 314
`
`Exhibit 2012
`Exhibit 20 12
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`Apple Inc. (“Petitioner”) filed a Petition seeking institution of an inter
`
`partes review of claims 1—20 of U.S. Patent No. 8,421,619 B2 (Ex. 1001,
`
`“the ’619 patent”). Paper 1 (“Pet”). LBT IP I LLC (“Patent Owner”) filed
`
`a Preliminary Response. Paper 8 (“Prelim Resp”).
`
`An inter partes review may not be instituted unless “the information
`
`presented in the petition .
`
`.
`
`. and any response .
`
`.
`
`. shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having
`
`reviewed the Petition and the Preliminary Response, we determine that
`Petitioner has shown a reasonable likelihood it would prevail in establishing
`
`the unpatentability of all challenged claims. Accordingly, we institute an
`
`inter partes review.
`
`I. BACKGROUND
`
`A. Related Matters
`
`The parties identify a district court proceeding that involves the
`
`’619 patent: LBTIPILLC v. Apple Inc, 1:19-cv—01245 (D. Del.). Pet. 75;
`
`Paper 3, 2 (Patent Owner Mandatory Notices); Paper 6, 2 (Patent Owner
`
`Amended Mandatory Notices).
`
`In addition, Petitioner filed petitions challenging the following four
`
`patents, which are related to the ’619 patent: (1) US. Patent No. 8,497,774
`
`(IPR2020-01189); (2) US. Patent No. 8,542,113 (IPR2020-01190); (3) US.
`
`Patent No. 8,102,256 (IPR2020—01 191); and (4) U.S. Patent No. 8,421,618
`
`(IPR2020-01192). See Pet. 75. Contemporaneously with this Decision, the
`
`Board enters decisions granting institution of IPR2020-01 189,
`
`IPR2020-01190, IPR2020-01191, and IPR2020-01192.
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`B. The Petition ’s Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability (Pet. 8):
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`
`,
`..
`Reference(s)/BaSis'
`
`1, 5, 6, 8—11,15—16,
`18—20
`
`103(a)1
`
`Miranda-Knapp,2 Miller3
`
`Miranda-Knapp, Miller, Vaganov4
`
`Miranda-Knapp, Miller, Cervinka5
`
`Miranda-Knapp, Miller, Herrero6
`
`
`
`
`
`
`
`
`
`
`3,4, 12—14
`
`
`
`
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`
`
`Petitioner also relies on the testimony of Mr. Scott Andrews to support its
`
`contentions. Ex. 1003.
`
`C. Summary of the ’619 Patent
`
`The ’619 patent is titled “Apparatus and Method for Determining
`
`Location and Tracking Coordinates of a Tracking Device.” Ex. 1001, code
`
`(54). The application that led to the ’619 patent was filed on January 23,
`
`2012, as a division of an application filed on January 6, 2008. Id. at codes
`
`(22), (62).
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285—88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`
`2 US 6,940,407 B2, issued September 6, 2005 (Ex. 1004).
`
`3 US 2006/0119508 A1, published June 8, 2006 (Ex. 1011).
`
`4 US 2006/0272413 A1, published December 7, 2006 (Ex. 1008).
`
`5 US 7,053,823 B2, issued May 30, 2006 (Ex. 1009).
`
`6 US 2008/0266174 A1, published October 30, 2008 (Ex. 1010).
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01 193
`
`‘ Patent 8,421,619 B2
`
`The ’6 19 patent is directed to an apparatus to monitor location
`
`coordinates of an electronic tracking device. Ex. 1001, Abstract. Figure 1,
`
`reproduced below, depicts a schematic of the electronic tracking device.
`
`
`
`Location tracking
`
`
`
`signal delecting
`
`mrcuity
`
`
`
`.
`
`l22a.122b
`
`signal processing
`cirouily
`
`
`battery
`waging
`
`circuitry
`
`
`
`As depicted in the schematic of Figure 1, reproduced above, tracking
`
`device 100 contains electronic components 101 such as transceiver 102,
`
`signal processing circuitry 104 (e.g., a microprocessor or other signal logic
`
`circuitry), and accelerometer 130. Ex. 1001, 5:50—53. Tracking device 100
`
`also includes location tracking circuitry 114—for example, global
`
`positioning system (GPS) logic circuitry—that “calculates location data
`
`received and sends the data to signal processing circuitry.” Id. at 6: 12—14,
`
`6:16—17; see id. at 5:62—66 (signal processing circuitry 104 determines
`
`location coordinates).
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`Accelerometer 130 may determine if tracking device 100 is stationary
`
`for a period of time (Ex. 1001 , 8: 13—19), and using such a determination,
`
`tracking device 100 may transmit its last known location without activating
`
`location tracking circuitry 114 (id. at 8:19-29). “Advantageously, in this
`
`embodiment, when electronic tracking device 100 does not utilize and
`
`require GPS circuitry, e.g., location tracking circuitry 114, or functionality,
`
`the power resources are preserved of battery 118 in contrast to many
`
`conventional GPS communication systems, which continue powering-on
`
`GPS circuitry.” Id. at 8:29—34.
`
`In addition, tracking device 100 may include circuitry (e.g.,
`
`processing circuitry 104) that recognizes “programmed motions received by
`
`accelerometer .
`
`.
`
`. and transmits an alert message .
`
`.
`
`. upon receiving a
`
`recognized motion pattern.” Ex. 1001, 8:45—51. For example, tracking
`
`device 100 may detect tapping against the device in an “SOS tap cadence”
`
`(id. at 8:51—57), spins, turns, or flips of the device (id. at 8:59—67), or
`
`physical impacts that indicate the device has fallen (id. at 916—30).
`
`D. Challenged Claims
`
`The Petition challenges claims 1—20 of the ’619 patent. Claims 1, 11,
`
`and 20 are independent and recite similar subject matter. Claims 2—10
`
`depend (directly or indirectly) from claim 1, and claims 12—19 depend
`
`(directly or indirectly) from claim 11.
`
`Independent claim 1 is illustrative:
`
`A portable electronic tracking device to monitor
`1.
`location coordinates of one or more individuals and objects, the
`
`device comprising:
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01 193
`
`Patent 8,421,619 B2
`
`transceiver circuitry to receive at least one portion of a
`receive communication signal comprising location coordinates
`information;
`
`accelerometer circuitry to measure displacements of the
`portable electronic tracking device, wherein the displacements ,-
`comprise movements of an object or individual associated with
`the device;
`
`a battery power monitor configured to activate and
`deactivate at least one portion of signaling circuitry in response
`to the accelerometer circuitry detecting a substantially
`stationary position of the electronic tracking device since last
`known location coordinate measurement; and
`
`processor circuitry configured to process the
`displacements, to associate the displacements with a specified
`pattern, and to generate an alert message in response to the
`specified pattern.
`
`Ex. 1001,10221—40.
`
`II. ANALYSIS
`
`A. The Level of Ordinary Skill in the Art
`
`Petitioner asserts that the level of ordinary skill in the art corresponds
`
`to “(i) a Bachelor degree (or higher degree) in Electrical Engineering,
`
`Computer Engineering, Computer Science, or an equivalent degree and
`
`(ii) at least one year of experience working in the field of with at least two
`
`years of experience in GPS navigation, dead reckoning, portable tracking
`
`devices, or related technologies.” Pet. 5 (citing Ex. 1003 1111 29—31).
`
`At this stage, Patent Owner does not address the level of ordinary skill
`
`in the art. See generally Prelim. Resp.
`
`The specific language in Petitioner’s definition has two problems.
`
`First, the phrase “at least one year of experience working in the field of
`
`with” appears to have been added in error. We note that the other portion of
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`Petitioner’s definition requires two years of experience in certain
`
`technologies, which comports with Mr. Andrews’s testimony that an
`
`ordinary artisan would have had two years of experience in these fields. See
`
`Ex. 1003 ‘H 30. Thus, it appears that Petitioner intended to require two years
`
`of experience, and we interpret Petitioner’s definition accordingly for
`
`purposes of this Decision. Second, Petitioner’s use of the qualifier “at least”
`
`and reference to a “higher degree” both introduce vagueness, so we do not
`
`adopt this language.
`
`Accordingly, for purposes of this Decision, we determine that a
`
`person of ordinary skill in the art would have: (1) a bachelor’s degree in
`electrical engineering, computer engineering, computer science, or an
`
`equivalent degree, and (2) two years of experience in or with GPS
`
`navigation, dead reckoning, portable tracking devices, or related
`
`technologies. We are satisfied that this definition generally comports with
`the level of skill necessary to understand and implement the teachings of the
`
`’619 patent and the asserted prior art. This definition is also supported by
`
`the testimony of Mr. Andrews. To the extent the level of ordinary skill in
`
`the art is in dispute or makes a material difference in the obviousness
`
`analysis, the parties should brief their respective positions in this regard
`
`during trial.
`
`B. Claim Construction
`
`We interpret claim terms using “the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C.
`
`282(b).” 37 CPR. § 42.100(b) (2019). Under the principles set forth by
`our reviewing court, the “words of a claim ‘are generally given their
`
`ordinary and customary meaning,” as would be understood by a person of
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`ordinary skill in the art in question at the time of the invention. Phillips v.
`
`AWH Corp, 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
`
`Vitronics Corp. v. Conceptronic, Inc, 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
`
`Petitioner submits that “no claim terms require express construction to
`
`resolve the grounds presented.” Pet. 9. At this stage, Patent Owner argues
`
`that Petitioner misconstrues the scope of the claim phrase “an object or
`
`_ individual associated with the device,” which appears in independent claims
`
`1 and 11 (Prelim. Resp. 7‘9), and Patent Owner distinguishes the meaning
`
`of the term “displacements,” which appears in all three independent claims
`
`(id. at 3—4, 11). But Patent Owner does not propose an explicit construction
`
`for either.
`
`For clarity, we analyze Patent Owner’s arguments relating to claim
`
`scope in connection with our discussion of the associated claim limitation in
`
`Section II.E.1.c, infra. Ultimately, our determination whether to institute
`
`does not depend on a construction of any claim terms or phrases, and thus
`
`we do not expressly construe any terms at this preliminary stage. 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»).
`
`C. Law on Obviousness
`
`The legal 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 ordinary skill in the art; and (4) when in evidence,
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01 193
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`Patent 8,421,619 B2
`
`objective evidence of nonobviousness.7 Graham v. John Deere C0. ofKan.
`
`City, 383 US. 1, 17—18 (1966). One seeking to establish obviousness based
`
`on more than one reference also must articulate sufficient reasoning with
`
`rational underpinnings to combine teachings. See KSR Int ’1 Co. v. Teleflex
`
`Inc, 550 US. 398, 418 (2007).
`
`D. Summary ofPrior Art
`
`I. Miranda-Knapp (Ex. 1004)
`
`Miranda-Knapp describes a method of detecting when a portable
`
`communication device (such as a cell phone) has been dropped or misplaced
`
`and then notifying the user of the device’s location. Ex. 1004, 1:12—32,
`
`2:33-51, Title, Abstract. Miranda-Knapp’s exemplary device 10 is
`
`illustrated in Figure 1, shown here:
`
`18
`,0 FIG. 1
`
`MEMORY
`USER
`
`
`INPUT!
`
`SAFE ZONES
`OUTPUT
`
`BATTERY
`
`
`THRESHOLDS
`
`PROFILE
`
`
`DATABASE
`
`
`_____[.52.
`
`.
`_
`.‘ _ _ _
`EDISPLAYI:
`PROCESSOR/CONTROLLER
`
`f Transceiver :
`"”LHc'éiib'rTLH»
`3'“"F$f2’é‘F'xL‘é""‘«
`................
`23 Determination:
`: COMPARISON
`
`
`
`i'ACCELERATION
`i
`SENSOR
`'l__
`
`:07"—
`
`7 The current record does not include allegations or evidence of objective
`indicia of nonobviousness.
`
`Exhibit 2012
`Exhibit 2012
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`
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`IPR2020-01193
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`Patent 8,421,619 B2
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`As shown above, Figure 1 is a block diagram of device 10 (e.g., a phone)
`
`that shows its basic components. Ex. 1004, 2:16—18, 2:52—55, Fig. 1.
`
`Device 10 includes a transceiver (i.e., receiver/decoder 12 and
`
`transmitter/encoder 14) and may optionally include a second transceiver for
`
`shorter range communications (i.e., 802.11 transceiver 24). Id. at 2:57—63.
`
`It also includes processor 16 (and associated logic module 17), memory 18,
`
`and acceleration sensor 20 (e.g., an accelerometer). Id. at 2:56—57, 324—16.
`
`Device 10 further includes location module 23, which can use GPS
`
`technology to determine the location of device 10 (id. at 3:21—23, 4:47—50),
`
`and power management integrated circuit (IC) 27 to monitor battery voltage
`
`(id. at 2:67—3 :2).
`
`In operation, Miranda-Knapp’s device monitors the accelerometer’s
`
`output: if the acceleration remains below a threshold for a period of time
`
`(such as 48 hours), then Miranda-Knapp concludes that “the phone has not
`
`been moved and thus likely [has been] misplaced.” Ex. 1004, 4:57—65,
`
`Fig. 3 (steps 32—36). In this situation, the phone determines and records its
`
`location and a time stamp. Id. at 5:1—3, Fig. 3 (steps 40, 42). If the device is
`
`not in a “safe zone” (such as the user’s home), the device sends an alert
`
`message to the user with the recorded location and time stamp when: (1) the
`
`battery level is below a threshold, or (2) an inactivity period has expired. Id.
`
`at 523—39, Fig. 3 (subroutine A, step 44), Fig. 5 (steps 202—208); see id. at
`
`5:11-14 (explaining that battery could drain while waiting for the rest period
`
`to expire).
`
`If, on the other hand, the phone detects motion exceeding the
`
`threshold, then the accelerometer’s data is processed to determine if the data
`
`matches a drop profile or signature. Ex. 1004, 5:44-47, Fig. 3 (steps 32—34,
`
`10
`
`Exhibit 2012
`Exhibit 2012
`
`
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`IPR2020-01 193
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`Patent 8,421,619 B2
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`46); see id. at Fig. 2, 4:4—32 (explaining that accelerometer data indicates
`
`when a phone is dropped, stationary, or picked up). “if the acceleration
`
`profile is indicative of the phone being dropped” and the phone is not
`
`promptly picked up, “then the phone can immediately alert the user.” Id. at
`
`5:50—58, Fig. 3 (steps 48—58); see also id. at 5:59—63 (phone can emit an
`
`alert ringtone and/or send an alert message to the user with its location).
`
`2. Miller (Ex. 1011)
`
`Miller discloses a method for reducing power consumption in a
`
`mobile device by halting the scanning of its receivers when the device is
`
`stationary. Ex. 1011 11 12, Abstract. A block diagram of Millers’ exemplary
`
`apparatus is shown in Figure 1, reproduced below:
`
`WiF i
`
`signal strength
`Receiver
`
`
`1 02
`
`
`GPS
`
` position and velocity
`
`Receiver
`
`1 04
`
`Cellular
`
`motion/non—mofion
`
`
`signal strength
`Receiver
`
`signal
`
`
`106
`
`Accelerometer
`
`
`1 14
`
`
`
`Scan
`
`
`Controller
`112
`
`
`As shown above, apparatus 100 includes Wi-Fi receiver 102, GPS receiver
`
`104, cellular receiver 106, and accelerometer 114. Ex. 1011 11 13. The
`
`11
`
`Exhibit 2012
`Exhibit 2012
`
`
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`IPR2020-01 193
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`Patent 8,421,619 B2
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`receivers scan for radio signals to determine the mobile device’s location:
`
`GPS receiver 104 “receive[s] GPS satellite data to compute and track the
`
`mobile device’s current location”; Wi-Fi receiver 102 identifies nearby
`
`access points; and cellular receiver 106 identifies nearby cell towers. Id.
`
`111] 13—16. Accelerometer 114 measures the acceleration of the mobile
`
`device. Id. 111] 17—18. This data is sent to a motion model, which “utilizes
`
`all signals from receivers 102, 104, 106, and accelerometer 114 to determine
`
`the velocity of the mobile deviCe.” Id. 1111 20—21; see also id. 11 26.
`
`A scanning rate for receivers 102, 104, and/or 106 is determined
`
`based on the velocity of the mobile device. Ex. 1011 11 22. In particular, if
`
`“the mobile device is not in motion, then the scanning rate may be set at zero
`
`.
`
`.
`
`. halt[ing] the scanning of receivers 102, 104, and/or 106,” so these
`
`components “utilize little or no power.” Id.; see also id. at Fig. 2 (steps 210,
`
`214). But see id. 11 28 (describing another embodiment where the receivers
`
`“continue scanning, but at a much lower scanning rate”). Moreover, when
`
`the mobile device starts to move, “accelerometer 114 knows
`
`instantaneously” and provides an appropriate signal to motion model, which
`
`resumes the receivers’ scanning operations. Id. 1111 18, 29; see also id. at
`
`Fig. 2 (steps 216, 204).
`
`3. Vaganov (Ex. 1008)
`
`Vaganov describes a three dimensional (3D) three-axis accelerometer
`
`for measuring three components of acceleration with respect to an
`
`orthogonal coordinate system. Ex. 1008 1111 3, 20, Abstract. The
`
`accelerometer includes four beams, which are each attached to a different
`
`side of a central proof mass and a surrounding frame. Id. 11 150; see id. at
`
`Fig. 6 (illustrating mechanical microstructure of the accelerometer).
`
`12
`
`Exhibit 2012
`Exhibit 2012
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`
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`1PR2020-01193
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`Patent 8,421,619 B2
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`Vaganov contemplates use of the accelerometer in portable devices such as
`
`cell phones. Id. 11 40.
`
`4. Cervinka (Ex. 1009)
`
`Cervinka teaches a device for tracking cargo. Ex. 1009, Abstract.
`
`Cervinka’s tracking device receives GPS position data from an access point;
`
`if that data is not received, the tracking device starts acquiring data from its
`
`internal dead reckoning sensors (including a 3D accelerometer). Id. at 4:41—
`
`55, 7:1—9; see id. at 3:53—61, Fig. 3. The tracking device sends “the last
`
`received GPS position data and the acquired dead reckoning data” to a
`
`central server so that the central server can determine the current location of
`
`the tracking device. Id. at 7:22—30, 7:50—55; see id. at 9:33—50 (suggesting
`
`“pre-process[ing] the dead reckoning data directly in the controller 24 of the
`
`tracking device before sending it to the central server 10”).
`
`According to Cervinka, a person of ordinary skill in the art would
`
`have understood that the current position of the tracking device (and its
`
`associated cargo) could be determined using the most recent GPS position
`
`data and the acquired dead reckoning data. Id. at 7:50-55; see id. at 3:62—64
`
`(explaining that dead reckoning techniques are not described in detail
`
`because they “are believed well known in the art”), 7:56—62 (explaining that
`
`“many methods for the determination of the current position of the cargo
`
`exist and generally depend at least on the type of dead reckoning data
`
`received”).
`
`5. Herrera (Ex. 1010)
`
`Herrero discloses a method of locating a portable device using
`
`“Assisted GPS” (or “A-GPS”) technology. Ex. 1010 1] 12. According to
`
`13
`
`Exhibit 2012
`Exhibit 2012
`
`
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`IPR2020-01193
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`Patent 8,421,619 B2
`
`Herrero, A—GPS technology improves the sensitivity, speed, and power
`
`consumption of a GPS receiver. Id. {[11 5, 7; see id. at 1111 2—7 (explaining that
`
`conventional GPS systems generally have limited efficiency in interior
`
`spaces, where satellite signals may be not be received). Specifically,
`
`Herrero’s device calculates its location using both a GPS signal received
`
`from a satellite as well as “GPS assistance information” received via a
`
`“wireless communication network” from a server. Id. 11 13, Abstract; see id.
`
`1] 50 (wireless communication network may be WiFi). The device includes a
`
`transmission/receiving module and an A-GPS positioning module that
`
`receives these signals. Id. 1111 51—52, Figs. 1-2.
`
`E. Obviousness Grounds Based on Il/Iiranda-Knapp and Miller
`
`Petitioner contends that the subject matter of independent claims 1,
`
`11, and 20 and dependent claims 5, 6, 8—10, 15, 16, 18, and 19 would have
`
`been obvious over the combination of Miranda-Knapp and Miller. Pet. 12—
`
`58. Petitioner further contends that the subject matter of dependent claims
`
`2—4, 7, 12—14, and 17 would have been obvious over the combination of
`
`Miranda-Knapp and Miller with Vaganov, Cervinka, or Herrero. Id. at 58—
`
`. 74; see also id. at 8 (listing grounds).
`
`Patent Owner contends that the proposed combination of Miranda-
`
`Knapp and Miller is improper. Prelim. Resp. 4—7. In addition, Patent
`
`Owner contends that Petitioner fails to show a reasonable likelihood of
`
`prevailing in its contention that Miranda-Knapp discloses certain limitations
`
`of claim 1, which are also present in all other challenged claims. Id. at 7—14.
`
`At this stage, Patent Owner does not otherwise dispute Petitioner’s
`
`contentions. See id. at 14.
`
`14
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`1. Independent Claim 1
`
`Petitioner contends that the subject matter of independent claim 1
`
`would have been obvious over the combination of Miranda—Knapp and
`
`Miller. Pet. 13—50. Patent Owner disputes this contention. Prelim.
`
`Resp. 4—14.
`
`a.
`
`“A portable electronic tracking device to monitor
`location coordinates ofone or more individuals and
`objects, the device comprising”
`
`Petitioner asserts that, if the preamble is limiting,8 Miranda-Knapp
`
`teaches it. Pet. 13—16 (citing Ex. 1004, 1:12—15, 2:33—39,9 2:52—3:27, 3:37—
`
`46, 3:55—57, 3:61—426, 4:33—56, 5:6—29, 5:54—60, 6:24—30, Fig. 3 (step 40),
`
`Fig. 4 (step 108); citing Ex. 1003 1111 112—120). According to Petitioner,
`
`Miranda-Knapp’s device 10 (the claimed “portable electronic tracking
`
`device”) determines whether a phone has been dropped or misplaced and
`
`determines the phone’s location by attempting a GPS fix so that the owner
`
`can be notified of the status of the phone. Id.
`
`Patent Owner does not dispute Petitioner’s arguments, analysis, or
`
`evidence for the preamble. See generally Prelim. Resp.
`
`Petitioner’s assertions and explanations are consistent with and
`
`supported by the evidence cited by Petitioner. Accordingly, Petitioner has
`
`shown sufficiently that Miranda-Knapp teaches the preamble.
`
`8 “Generally, the preamble does not limit the claims.” Allen Eng ’g Corp. v.
`Bartell Indus, Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
`
`9 This citation includes a typographical error (see Pet. 14 (citing “2:33-3”)),
`and instead a correct reference would appear to refer to lines 33 to 39.
`
`15
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
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`b. “transceiver circuitry to receive at least one portion
`ofa receive communication signal comprising
`location coordinates information ”
`
`Petitioner contends that Miranda-Knapp teaches or suggests this
`
`limitation, and in the alternative, Petitioner contends that it would have been
`
`obvious to combine Miller’s GPS receiver 104 with Miranda-Knapp to teach
`
`this claim limitation. Pet. 16—20.
`
`In particular, Petitioner first contends that Miranda-Knapp teaches the
`
`claimed “transceiver circuitry” and provides an annotated version of
`
`Miranda-Knapp’s Figure 1 in support of its analysis. Pet. 16—17 (citing
`
`Ex. 1004, 2:52—63, 3:21—43; Ex. 1003 W121—132;Ex. 1001, 822—4).
`
`Petitioner’s annotated version of Miranda-Knapp’s Figure l is reproduced
`
`below.
`
`25
`
`V
`
`INPUT}
`
`MEMORY
`
`.
`SAFE ZONES
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`BATI'ERY
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`
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`
`TRAN$MITFERI
`
`' USER
`V vr’ts
`13 M\'\ WWW
`c:o -
`lBATTERYiz
`I12
`RECEIVER!
`Power
`
`'
`
`24
`
`.
`,
`V
`fu'éb'i'fiivw’:
`" PROCESSOR/CONTROLLER.
`slrgangeeggg:"'
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`
`-----------
`5,.-.-,EQ‘3.19_----§"'"‘5
`lACCELERATiON .
`K '
`
`SENSOR 1J1?
`20
`
`22
`
`"""J4:..-._
`i'PEZFETj
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`- "' “'1'”:
`«5"»
`Ii \
`
`In this annotated version of Figure 1, Petitioner outlines
`
`transmitter/encoder 14, receiver/decoder 12, transceiver 24, location
`
`16
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`module 23, and processor/controller 16 in red to identify “transceiver
`
`circuitry.” Pet. 17. Petitioner contends that Miranda-Knapp’s location
`
`module 23 determines its location using GPS technology. Id. (citing
`
`Ex. 1004, 3:21—27, 3:64—67, 4:41—50, 7:53-57 (claim 12), Fig. 3 (step 40),
`
`Fig. 4 (step 108)). Petitioner argues that it would have been obvious that
`
`location module 23 receives the claimed “at least one portion of a receive
`
`communication signal.” Id. (citing Ex. 1003 1111 123—124). Petitioner
`
`contends that an ordinary artisan would have understood that module 23
`
`“determines its position with the location coordinates information from a
`
`GPS satellite signal including location coordinates information, as well-
`
`known in the art.” Id. at 17—18 (citing Ex. 1003 W 124, 126; Ex. 1004,
`
`1:62—66).
`
`Petitioner next contends that, “[t]o the extent Patent Owner argues
`
`Miranda-Knapp does not teach or render obvious” this limitation, Miller
`
`teaches it. Pet. 18. Petitioner contends that Miller’s GPS receiver 104
`
`receives radio signals from GPS satellites in order to determine the device’s
`
`current location. Id. at 18—19 (citing Ex. 1011 111] 13, 15; Ex. 1003 W 128—
`
`129). Petitioner argues that it would have been obvious to combine Miller’s
`
`GPS receiver 104 with Miranda—Knapp’s disclosure by adding or
`
`substituting Miller’s GPS receiver 104 and Miranda—Knapp’s location
`
`module 23. Id. at 19—20 (citing Ex. 1003 M 130—132).
`
`Patent Owner contends that Petitioner’s proposed combination of
`
`Miranda-Knapp and Miller is improper. Prelim. Resp. 4—7. According to
`
`Patent Owner, “It/[iranda-Knapp explicitly discloses a location module
`
`which may be a GPS receiver.” Id. at 6 (citing Ex. 1004, 3:21—23). Patent
`
`Owner states, “Miller discloses a GPS receiver that receives radio signals
`
`17
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`from GPS satellites used to determine a mobile device’s current location.”
`
`Id. (citing Ex. 1011 W 13, 15, Fig. 1). Patent Owner argues that “the GPS
`
`receiver of Miller does not add any additional functionality to Miranda-
`
`Knapp,” so it would not have been obvious to modify these references. Id.
`
`at 6—7. Patent Owner further argues that the combination is improper
`
`because Miller “impermissibly add[s] an element or functionality already
`
`present in the primary reference.” Id. at 7; see id. at 5 (“The Petitioner must
`
`show that a proposed combination does not impermissibly add an element or
`
`functionality already present in the primary reference”).
`
`On this record, we are persuaded that Miranda-Knapp teaches this
`
`limitation. Petitioner’s assertions and explanations are consistent with and
`
`supported by the evidence cited by Petitioner. Indeed, Patent Owner
`
`acknowledges that Miranda-Knapp discloses a GPS receiver (Prelim. Resp.
`
`6), and Patent Owner appears also to agree that Miranda-Knapp’s receiver
`
`receives radio signals from GPS satellites to determine a mobile device’s
`
`location (see id). On this record, and for purposes of this Decision, we are
`
`persuaded that a person of ordinary skill in the art would have expected that
`
`Miranda-Knapp’s location module 23 receives a signal that includes
`
`information about location coordinates. Consequently, on this record and
`
`for purposes of this Decision, we are persuaded that Miranda-Knapp teaches
`
`this limitation.
`
`Rather than identifying any deficiencies in Miranda-Knapp, Patent
`
`Owner argues that Petitioner’s alternative argument (which relies on Miller
`
`to address Miranda-Knapp’s deficiencies) is improper. See Prelim. Resp. 4—
`
`7. We need not reach this alternative—or Patent Owner’s critique of it—
`
`because we perceive no deficiencies in Miranda-Knapp itself.
`
`18
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01193
`
`Patent 8,421,619 B2
`
`Accordingly, Petitioner has shown sufficiently that Miranda—Knapp
`
`teaches this limitation, notwithstanding Patent Owner’s counterarguments.
`
`c.
`
`”accelerometer circuitry to measure displacements of
`the portable electronic tracking device, wherein the
`displacements comprise movements ofan object or
`individual associated with the device ”
`
`Petitioner asserts that Miranda—Knapp teaches this limitation. Pet. 20—
`
`23. According to Petitioner, Miranda-Knapp’s accelerometer (i.e.,
`
`acceleration sensor 20) teaches the claimed “accelerometer circuitry.” Id. at
`
`20—21 (citing Ex. 1004, 4:52—57, Abstract, Fig. 1). Petitioner contends that
`
`a person of ordinary skill in the art would have understood Miranda-Knapp’s
`
`accelerometer “to measure displacements of the portable electronic
`
`tracking device” because an accelerometer measures the accelerations
`
`associated with the phone’s movement. Id. at 21—23 (citing Ex. 1003
`
`1111 133—138; Ex. 1004, 424—33, 5:44—47, Fig. 2; comparing Ex. 1001, 8:47—
`
`51 with Ex. 1004, 2:52—57, 3:2-3). Petitioner explains that, “by measuring
`
`acceleration with an accelerometer, the displacement of the object, i.e., the
`
`movement of the object, is also measured.” Id. at 21—22. Petitioner also
`
`contends that Miranda-Knapp’s “device 10 may be included in a cell phone,
`
`[so] the accelerometer 20 is measuring the movements of the cell phone
`
`associated with the portable communication device (e.g., carrying the
`
`portable communication device).” Id. at 23 (citing Ex. 1003 111] 137—138).
`
`We find that Petitioner’s assertions and explanations are consistent
`
`with and supported by the evidence cited by Petitioner. Miranda-Knapp
`
`discloses an accelerometer 20, and on this record, we are persuaded that a
`
`person of ordinary skill in the art would have understood that this
`
`accelerometer measures accelerations associated with movement and
`
`19
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01 193
`
`Patent 8,421,619 B2
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`displacements of device 10 and its associated cell phone. E. g., Ex. 1004,
`
`32—10, 4:4—32, Fig. 2; Ex. 1003 1111135—137.
`
`Patent Owner’s arguments do not reveal any deficiencies in
`
`Petitioner’s showing. See Prelim. Resp. 7—13. Patent Owner first argues
`
`that Petitioner fails to show that Miranda-Knapp discloses both the “portable
`
`electronic tracking device” and an “object or individual associated with the
`
`device,” as required by the claim. Id. at 7—9, 11—12. Patent Owner contends
`
`that these two elements “must necessarily be different.” Id. at 7. Patent
`
`Owner then states that “the Petitioner appears to assert that Ii/Iiranda-
`
`Knapp ’3 device 10 is somehow distinct from a cell phone in which device 10
`
`is located and, as such, the measurements of the cell phone falling are
`
`displacements of an object distinct from the device measuring the
`
`displacements.” Id. at 12 (citing Pet. 22—23). But, according to Patent
`
`Owner, Miranda-Knapp contradicts this position because “Miranda-Knapp
`
`clearly discloses that device 10 is the cell phone.” Id (citing Ex. 1004,
`
`3:37—46); 10 see also id. at 7—9 (citing Pet. 16; Ex. 1004, 2:54—55, 3:37—46).
`
`Although we agree with Patent Owner that the “object or individual
`
`associated with the device” is “different” than the “tracking device” recited
`
`in the claim (Prelim. Resp. 7), the Petition separately accounts for these
`
`limitations. Specifically, Petitioner contends that the claimed “electronic
`
`device” is taught by Miranda-Knapp’s device 10 and the associated “object”
`
`is taught by the cell phone associated with device 10. Pet. 23 (asserting that
`
`10 On page 8 of the Preliminary Response, Patent Owner cites column 4,
`lines 37—46 of Exhibit 1004, but quotes from column 3 of that exhibit. We
`have corrected this apparent typographical error throughout, and we have
`considered both the originally cited and the corrected passages.
`
`20
`
`Exhibit 2012
`Exhibit 2012
`
`
`
`IPR2020-01 193
`
`Patent 8,421,619 B2
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`“the displacements comprise movements (i.e., motions) of the object (e.g.,
`
`the phone being dropped) associated with the device (i.e., the portable
`
`communication device [10] carried by the phone)”); see also id. at 15—16
`
`(“Thus, the portable communication device [10] can be a phone or can be
`
`included or implemented with any two-way communicator.” (citing
`
`Ex. 1003 M 119—120)). We understand Petitioner’s contention to be that the
`
`claimed “electronic device” is taught by the circuitry in device 10 and the
`
`associated “object” is taught by the associated cell phone.
`
`On this record, we do not agree with Patent Owner’s argument that
`
`the cel
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