UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`LBT IP I LLC,
`
`Patent Owner
`____________
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`____________
`
`
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,497,774
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`TABLE OF CONTENTS
`
`PATENT OWNER’S EXHIBIT LIST ....................................................................III
`TABLE OF AUTHORITIES .................................................................................. IV
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`PETITIONER HAS NOT MET ITS BURDEN OF SHOWING BY CLEAR
`AND CONVINCING EVIDENCE THAT ANY OF THE CHALLENGED
`CLAIMS ARE INVALID AS OBVIOUS. ..................................................... 4
`A.
`The Prior Art Relied Upon By The Petitioner Does Not Disclose
`Limitation 1(e) “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.” ................................................... 4
`The Prior Art Relied Upon By The Petitioner Does Not Disclose
`Limitation 8(c) “an Electrical Power Resource Management
`Component to Adjust Cycle Timing of at Least one of a Request Rate
`of Location Coordinate Packets to a Target Host and a Listen Rate of
`the Location Coordinate Packets Responsive to an Estimated Charge
`Level of the Charging Unit.” ...............................................................10
`The Prior Art Relied Upon By The Petitioner Does Not Disclose
`Limitation 8(d) “Wherein the Battery Power Level Monitor Measures
`a Power Level of the Charging Unit and Adjusts a Power Level
`Applied to Location Tracking Circuitry Responsive to One or More
`Signal Levels, the Power Level Comprising a Multitude of Threshold
`Values Determined by a User or System Administrator to
`Intermittently Activate or Deactivate the Location Tracking Circuitry
`to Conserve Power of the Charging Unit in Response to the Estimated
`Charge Level of the Charging Unit.” ..................................................12
`III. RESERVATION OF RIGHTS ......................................................................17
`
`B.
`
`C.
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`IV. CONCLUSION ..............................................................................................18
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`
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`PATENT OWNER’S EXHIBIT LIST
`
`2002
`
`Exhibit Number Description
`2001
`Declaration of Brian S. Seal in support of Patent Owner’s
`Unopposed Motion For Pro Hac Vice Admission
`Revised Declaration of Brian S. Seal in support of Patent
`Owner’s Unopposed Motion For Pro Hac Vice Admission
`Transcript of deposition of Scott Andrews
`U.S. Pub. No. 2009/0174603 (Appl. No. 11/969,905)
`Sun, U.S. Patent Number 7,612,663
`Syrjarinne et al., U.S. Pub. No. 2005/0113124
`Suprun et al., U.S. Patent Number 7,292,223
`Croyle et al., U.S. Patent Number 5,862,511
`Lau et al., U.S. Patent Number 5,592,173
`Tsai, U.S. Pub. No. 2007/0057068
`Huang et al., U.S. Patent Number 7,826,968
`File history of U.S. Patent Number 8,421,619
`U.S. Pub. No. 2009/0189807 (Appl. No. 12/419,451)
`
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`TABLE OF AUTHORITIES
`
`Cases
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019), cert. granted, 141 S. Ct. 551 (2020) ................. 18
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 16
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`The Petitioner has not demonstrated by clear and convincing evidence that
`
`any of the challenged claims of U.S. Patent No. 8,497,774 (“the ’774 Patent”) are
`
`invalid as obvious because the references on which it relies nonetheless fail to
`
`disclose required limitations from the challenged claims. Because the Petitioner has
`
`not met its burden, the challenged claims should be upheld.
`
`I.
`
`INTRODUCTION
`
`The ’774 Patent describes an electronic tracking device that includes a battery
`
`power monitor, a charging unit, and an electrical power resource management
`
`component. Ex. 1001, Abstract. The electrical power resource management
`
`component adjusts cycle timing of one or more of control parameters for the tracking
`
`device and the control parameters include request rate of location coordinate packets
`
`to a target host and a listen rate of the location coordinate packets. Id.
`
`Independent claim 1 recites, in part:
`
`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;
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`Id., Claim 1.
`
`Independent claim 8 recites, in part:
`
`an electrical power resource management component to adjust cycle
`
`timing of at least one or a request rate of location coordinate packets to
`
`a target host and a listen rate of the location coordinate packets
`
`responsive to an estimated charge level of the charging unit,
`
`wherein the battery power level monitor measures a power level of the
`
`charging unit and adjusts a power level applied to location tracking
`
`circuitry responsive to one or more signal levels, the power level
`
`comprising a multitude of threshold values determined by a user or
`
`system administrator to intermittently activate or deactivate the location
`
`tracking circuitry to conserve power of the charging unit in response to
`
`the estimated charge level of the charging unit.
`
`Id., Claim 8.
`
`Thus, independent claims 1 and 8 each recites, in part, updating or adjusting
`
`“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.” In addition, independent claim 8 recites adjusting “a power
`
`level” that includes “a multitude of threshold values determined by a user or system
`
`administrator.”
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`The ’774 Patent discloses:
`
`In one embodiment, local battery power adjustment mechanism 416
`
`generates
`
`in substantially
`
`real-time updated set of network
`
`communication protocols. In one variant, updated set of network
`
`communication signaling protocols communicated, for instance,
`
`includes an update rate (e.g., refresh rate) of location coordinate packets
`
`446. In one example, update rate of location coordinate packets 446
`
`includes request rate 420 of location coordinate packets 422 by target
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`host 452 (e.g., a computer server) and/or listen rate 425 of location
`
`coordinate packets 422 by portable electronic tracking device 402.
`
` Id., 11:31-41. Thus, the ’774 Patent clearly discloses adjusting a rate at which
`
`location coordinate packets are either received or transferred.
`
`The ’774 Patent also discloses:
`
`In yet another advantage, the present invention power charging monitor
`
`(e.g., battery level monitor 116) measures a power level (e.g., battery
`
`power level 406) of power charging unit (e.g., battery 118) and adjusts
`
`a power level (e.g., battery power level 406) applied to, for example,
`
`location tracking circuitry (e.g., location tracking circuitry 114) or
`
`transceiver 102 responsive to one or more signal levels. In contrast to
`
`previous manufacturer tracking device power level settings, the present
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`U.S. Patent No. 8,497,774
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`invention has the capability of power level (e.g., battery power level
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`406) adjustments include multitude of threshold values (see active
`
`display 432 of FIG. 4) that is determined by user or system
`
`administrator to intermittently activate or deactivate location tracking
`
`circuitry (e.g., location tracking circuitry 1140) to conserve power of
`
`the power charging unit (e.g., battery 118) responsive to estimated
`
`charge level (e.g., battery charge level 406).
`
`Id., 13:52-67. Thus, the ’774 Patent clearly discloses the distinguishing feature of
`
`power level adjustments based on a multitude of threshold values.
`
`
`
`II.
`
`PETITIONER HAS NOT MET ITS BURDEN OF SHOWING BY
`CLEAR AND CONVINCING EVIDENCE THAT ANY OF THE
`CHALLENGED CLAIMS ARE INVALID AS OBVIOUS.
`
`A. The Prior Art Relied Upon By The Petitioner Does Not Disclose
`Limitation 1(e) “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.”
`
`The Petitioner has failed to meet its burden of showing by clear and
`
`convincing evidence that the prior art on which it relies discloses the limitation “local
`
`battery power adjustment mechanism to generate in substantially real-time an
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`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.” This limitation is recited in
`
`independent claim 1.
`
`The Petitioner relies on Sakamoto as disclosing this limitation. Sakamoto is
`
`directed to a GPS system including a portable terminal having a GPS receiver for
`
`determining a position of the terminal, and a remote server to which the position
`
`information can be transmitted. Ex. 1004, Abstract, [0018], [0030-0031]. In
`
`particular, Sakamoto explicitly discloses:
`
`When the positioning mode control unit 22 determines that the high
`
`sensitivity positioning mode is required when the signal level value
`
`is equal to or lower than a predetermined threshold value, …; if it
`
`is determined that the normal sensitivity positioning mode is
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`required when the signal level value is equal to or higher than a
`
`predetermined threshold value, …. If it is determined that the
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`positioning cannot be performed when the signal level value is
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`equal to or lower than a predetermined threshold value, the
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`position search may be stopped.
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`Id., [0038] (emphasis added). Thus, Sakamoto discloses a “normal sensitivity
`
`positioning mode,” a “high sensitivity positioning mode,” and a mode in which
`
`“position search may be stopped” when “positioning cannot be performed.”
`
`Furthermore, Sakamoto explicitly discloses two predetermined threshold values: a)
`
`a threshold value between the normal mode and the high sensitivity mode; and b) a
`
`threshold value for when to stop performing positioning.
`
`Sakamoto further discloses:
`
`…a series of positioning operations in which the power is turned on by
`
`the position request from the power-off state and the positioning is
`
`successful and then the power is turned off again is set to the normal
`
`sensitivity positioning mode.
`
`…the series of positioning operations for constantly operating the GPS
`
`receiver 10 is referred to as the “high sensitivity positioning mode.”
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`Id., [0024]-[0025].
`
`In context, Sakamoto discloses that a) the GPS receiver intermittently operates
`
`when a signal level exceeds a first threshold, b) the GPS receiver constantly operates
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`when the signal level does not exceed the first threshold, and c) the GPS receiver
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`stops operating when the signal level falls below a second threshold. Stated another
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`way, Sakamoto teaches that a GPS receiver operates normally when a signal level is
`
`normal, the GPS receiver works harder when the signal level is less than normal, and
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`U.S. Patent No. 8,497,774
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`the GPS receiver stops working when the signal level is such that the GPS receiver
`
`cannot perform GPS positioning.
`
`As discussed above in Section I, the Abstract of the ’774 Patent discloses that
`
`the claimed “request rate” and “listening rate” of independent claims 1 and 8 are
`
`parameters of “cycle timing,” (i.e., scheduling):
`
`The electrical power resource management component adjusts cycle
`
`timing of one or more of control parameters for the tracking device.
`
`Control parameters include request rate of location coordinate packets
`
`to a target host and a listen rate of the location coordinate packets. The
`
`adjustment is responsive to an estimated charge level of the charging
`
`unit, velocity of the device, and user desired inputs.
`
`Ex. 1001 at Abstract. The Summary of the Invention further requires that the request
`
`rate and listening rate are recurring scheduled events:
`
`In one variant, the method includes creation of an initial timing
`
`schedule for communication of signaling parameters associated with a
`
`request rate communicated with location coordinate information and
`
`listen rate communicated with the location coordinate information, the
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`initial time schedule being at least partially automatically and
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`responsive to an estimated power level of the charge unit.
`
` Ex. 1001 at 4:37-43.
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`’774 Patent clearly discloses adjusting a rate at which location coordinate packets
`
`are either received or transferred and refers to such rate as, for example, “a refresh
`
`rate.” The ’774 Patent further discloses:
`
`In response to receipt of updated set of network communication
`
`signaling protocols, portable location tracking device 402 adjusts
`
`settings (an internal time schedule) and acknowledges receipt of the
`
`message to target host 452. Portable location tracking device 402
`
`checks internal time schedule to determine if it should listen for
`
`(perform a location lookup of) location coordinates 422 from satellite
`
`navigation system 403 or an adjacent portable location coordinate
`
`tracking device …. Portable location tracking device 402 obtains
`
`location coordinates 422 and stores, for instance, in one or more internal
`
`breadcrumb memory location(s). Based on the internal time schedule,
`
`portable location tracking device 402 determines whether to transmit
`
`contents of the one or more breadcrumb memory location(s) to target
`
`host 452.
`
`Ex. 1001, 12:1-18. As such, the request rate of location coordinate packets to be
`
`communicated to a target host and the listen rate of the location coordinate packets
`
`from a satellite navigation system represent a schedule for when repeating activities
`
`occur.
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`The ’774 Patent further discloses three practical examples. In one, a lost dog
`
`has a portable tracking device and a user updates a set of network communication
`
`protocols such that “the high setting corresponds to 15 minute intervals for location
`
`and 15 minute intervals for transmission to target host, e.g., server.” Id., 14:4-7. In
`
`a second example, “a teenager borrows a parent’s car having portable location
`
`tracking device 402” and a user updates a set of network communication protocols
`
`such that “the medium setting corresponds to 15 minute intervals for location and 60
`
`minute intervals for transmission to the target host, e.g., server.” Id., 14:16-25. In a
`
`third example, “a provider of construction equipment having portable tracking
`
`device 402 rents the equipment to contractors” and a user updates a set of network
`
`communication protocols such that “the low setting corresponds to 1440 minute
`
`intervals (24 hours) for location coordinates and 1440 minute intervals (24 hours)
`
`for transmission to the target host, e.g., server.” Id., 14:39-47. As such, this limitation
`
`is directed to updating a schedule of repeating events.
`
`Sakamoto does not disclose a schedule of repeating events or any updating of
`
`such schedule. While Sakamoto’s normal sensitivity positioning mode may involve
`
`repeatedly turning a GPS receiver on or off, Sakamoto explicitly discloses “in order
`
`to obtain terminal user A’s own position; a position request is sent to the positioning
`
`control unit 13 by pressing the button provided on the man-machine interface control
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`U.S. Patent No. 8,497,774
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`unit 14.” Ex. 1004, [0020]. Thus, Sakamoto’s normal sensitivity positioning mode
`
`is a manual mode. Similarly, Sakamoto discloses:
`
`… Therefore, once the positioning is successful, if the GPS receiver 10
`
`continues to operate without being cut off, at the next position request,
`
`even if the signal level from the GPS satellite is lower than that at the
`
`time of the first positioning, the positioning can be successful. In this
`
`way, the series of positioning operations for constantly operating the
`
`GPS receiver 10 is referred to as the “high sensitivity positioning
`
`mode.”
`
`Id., [0025]. That is, the high sensitivity mode is a continuous mode. Neither of these
`
`modes are based on a schedule and Sakamoto does not disclose any schedule or any
`
`updating of a schedule. The only other mode of Sakamoto is that of position search
`
`stopped, which is also not based on a schedule.
`
`For at least this reason, the Petitioner has failed to meet its burden of showing
`
`by clear and convincing evidence that the prior art on which it relies discloses this
`
`limitation as recited in independent claim 1. Dependent claims 4-6 also incorporate
`
`this limitation. As such, claims 1 and 4-6 should be upheld.
`
`B. The Prior Art Relied Upon By The Petitioner Does Not Disclose
`Limitation 8(c) “an Electrical Power Resource Management
`Component to Adjust Cycle Timing of at Least one of a Request
`Rate of Location Coordinate Packets to a Target Host and a
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`Listen Rate of the Location Coordinate Packets Responsive to
`an Estimated Charge Level of the Charging Unit.”
`
`Petitioner has also failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “an electrical power
`
`resource management component to adjust cycle timing of at least one of a request
`
`rate of location coordinate packets to a target host and a listen rate of the location
`
`coordinate packets responsive to an estimated charge level of the charging unit.”
`
`This limitation is recited in independent claim 8.
`
`The Petitioner relies on Sakamoto as disclosing this limitation with a rationale
`
`similar to that asserted in relation to limitation 1(e). In particular, the Petitioner
`
`asserts:
`
`Sakamoto’s electrical resource management component adjusts the
`
`cycle timing of the request rate and/or listen rate when it generates an
`
`updated set of communication signaling protocols associated with the
`
`request rate and listen rate. See § C.6.c) above; Dec., 98 (opining that
`
`each communication signaling protocol has a different cycle rate and
`
`that generating an updated set of communication signaling protocols
`
`adjusts the cycle timing of the listen rate).
`
`Paper 1, 46-47.
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`However, as discussed above in relation to limitation 1(e), Sakamoto does not
`
`disclose a schedule of repeating events or any updating of such schedule. To the
`
`contrary, Sakamoto explicitly discloses a “normal sensitivity positioning mode” that
`
`responds to manual requests, a “high sensitivity positioning mode” that continuously
`
`performs positioning, and a stop positioning mode. Again, none of these modes are
`
`based on a schedule and Sakamoto does not disclose any schedule or any updating
`
`of a schedule.
`
`For at least this reason, the Petitioner has failed to meet its burden of showing
`
`by clear and convincing evidence that the prior art on which it relies discloses this
`
`limitation as recited in independent claim 8. Dependent claims 10, 13, and 15 also
`
`incorporate this limitation. As such, claims 8, 10, 13, and 15 should be upheld.
`
`C. The Prior Art Relied Upon By The Petitioner Does Not Disclose
`Limitation 8(d) “Wherein the Battery Power Level Monitor
`Measures a Power Level of the Charging Unit and Adjusts a
`Power Level Applied
`to Location Tracking Circuitry
`Responsive to One or More Signal Levels, the Power Level
`Comprising a Multitude of Threshold Values Determined by a
`User or System Administrator to Intermittently Activate or
`Deactivate the Location Tracking Circuitry to Conserve Power
`of the Charging Unit in Response to the Estimated Charge Level
`of the Charging Unit.”
`
`Petitioner has also failed to meet its burden of showing by clear and
`
`convincing evidence that the prior art on which it relies discloses the limitation
`
`“wherein the battery power level monitor measures a power level of the charging
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`unit and adjusts a power level applied to location tracking circuitry responsive to one
`
`or more signal levels, the power level comprising a multitude of threshold values
`
`determined by a user or system administrator to intermittently activate or deactivate
`
`the location tracking circuitry to conserve power of the charging unit in response to
`
`the estimated charge level of the charging unit” as required by independent claim 8
`
`and its dependent claims, including challenged claims 10, 13, and 15. Ex. 1001 at
`
`16:53-61.
`
`The Petitioner relies on Sakamoto as disclosing this limitation. More
`
`specifically, in relation to “the power level comprising a multitude of threshold
`
`values determined by a user or system administrator,” the Petitioner asserts:
`
`Sakamoto discloses that the remaining battery amount (power level of
`
`the charging unit) has two thresholds against which it is compared to
`
`determine the positioning mode. Sakamoto discloses that, when the
`
`battery power falls below a first, user-defined threshold, the
`
`positioning mode switches from high sensitivity positioning mode to
`
`normal sensitivity mode, thereby causing the GPS receiver to be
`
`intermittently activated (as claimed), as opposed to the continuous
`
`activation of high sensitivity positioning mode. Sakamoto, [0029].
`
` Pet. at 50. That is, the Petitioner acknowledges that Sakamoto discloses only two
`
`thresholds for three operating modes.
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
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`The Petitioner, however, does not explicitly address the claim term
`
`“multitude” or the phrase “multitude of threshold values.” Rather, the Petitioner
`
`appears to assert that Sakamoto’s two thresholds are sufficient to form a multitude.
`
`Both the intrinsic and extrinsic evidence, however, demonstrate that a multitude in
`
`the context of the ’774 Patent is necessarily more than two.
`
`The limitation requiring a “multitude of threshold values” was added by the
`
`patentee during prosecution to overcome an objection under 35 U.S.C. 102(e). Ex.
`
`1002 at 9/10/2012 Applicant Argument, pp. 10-11. The examiner initially objected
`
`to claim 8 as anticipated by U.S. Patent No. 7,826,968 to Huang, et al. (“Huang”).
`
`Ex. 1002 at 6/8/2012 Non-Final Rejection, p. 2. Huang was directed in part to a GPS
`
`device that adjusts its frequency of positioning updates (i.e., a “position signal”)
`
`based on the speed of movement of the device:
`
`The position signal is updated every time interval. The duration of the
`
`time interval is changed dynamically to control the times of the position
`
`signal SL generated by baseband unit 122 during a one second period,
`
`or the position locating frequency of the GPS device 100. In this
`
`embodiment, the duration of the time interval is changed according
`
`to a speed of movement or a direction of movement of the GPS
`
`device 100, a remaining battery capacity (not shown) of the GPS
`
`device 100, or the number of the satellites.
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`Ex. 2011 at 2:43-52 (emphasis added). Huang further disclosed two preset speed-of-
`
`movement thresholds for adjusting the frequency of positioning updates:
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`When the speed of movement of the GPS device 100 exceeds a preset
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`value, the duration of the time interval is reduced in order to more
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`quickly obtain the position of the GPS device 100. FIG. 2A shows a
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`mapping function corresponding to instances of generating a position
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`signal by baseband unit 122 during a one second period and the speed
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`of movement of the GPS device 100. When the speed of movement of
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`the GPS device 100 exceeds 100 (Km/hr), the position signal is
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`generated by baseband unit 122 10 times during a one second period.
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`In other words, the position signal is generated by baseband
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`unit 122 once every 0.1 seconds. Thus, the position locating frequency
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`of the GPS device 100 is 10 Hz. When the speed of movement of the
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`GPS device 100 is approximately 50(Km/hr), the position signal is
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`generated by baseband unit 122 5 times during a one second period.
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`In other words, the position signal is generated by baseband
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`unit 122 once every 0.2 seconds. Thus, the position locating frequency
`
`of the GPS device 100 is 5 Hz. In summary, the frequency of generating
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`the position signal by baseband unit 122 is higher when the speed of
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`movement of the GPS device 100 is faster.
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`U.S. Patent No. 8,497,774
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`Ex. 2011 at 2:55-3:8 (emphasis added).
`
`The patentee amended the claims to include the limitation “wherein the
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`battery power level monitor measures a power level of the charging unit and adjusts
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`a power level applied to location tracking circuitry responsive to one or more signal
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`levels, the power level comprising a multitude of threshold values determined by a
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`user or system administrator to intermittently activate or deactivate the location
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`tracking circuitry to conserve power of the charging unit in response to the estimated
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`charge level of the charging unit.” Ex. 1002 at 9/10/2012 Applicant Amendment, p.
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`10. Based on that amendment, the examiner allowed the claim. Ex. 1002 at
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`9/20/2012 Notice of Allowance, p. 1. By adding the “multitude of threshold values”
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`limitation to claim 8 in order to overcome prior art that disclosed two thresholds, the
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`amendment is intrinsic evidence of the patentee’s clear intent to define “multitude”
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`as more than two. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
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`(intrinsic evidence includes specification and prosecution history). That definition is
`
`consistent with the ’774 Patent, which identifies a “multitude of threshold values”
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`by referring to “active display 432 of Fig. 4,” which includes between five and seven
`
`thresholds, depending on whether one includes the endpoints as thresholds. Ex. 1001
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`at 13:61-62; Fig. 4.
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`The extrinsic evidence further supports that conclusion. Dictionaries define
`
`“multitude” as “the condition or quality of being numerous” or “a very great
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`number.” Ex. 3001 at 3. See also Ex. 3002 at 3 (defining “multitude” as “a large
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`number”).
`
`Extrinsic evidence and case law regarding the definition of the term
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`“plurality” do not direct a different conclusion. As shown by Exhibits 3001 and
`
`3002, the term “plurality” has several definitions encompassing various degrees
`
`ranging from “the fact or state of being plural” to “a large number or amount.” Ex.
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`3001 at 4. See also Ex. 3002 at 4. “Plurality” is a synonym for “multitude” only in
`
`the latter context, not the former. Other synonyms for “multitude” include “host,”
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`“legion,” and “army,” all of which “denote a very great number of people or things.”
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`Ex. 3001 at 3.
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`Because the intrinsic and extrinsic evidence demonstrate that a “multitude” is
`
`necessarily greater than two, Sakamoto’s two thresholds are not a multitude.
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`Therefore, Sakamoto does not and cannot disclose this limitation. For at least this
`
`reason, the Petitioner has failed to meet its burden of showing by clear and
`
`convincing evidence that the prior art on which it relies discloses this limitation as
`
`recited in independent claim 8 and dependent claims 10, 13, and 15.
`
`III. RESERVATION OF RIGHTS
`
`Patent Owner does not concede or waive any omitted arguments and this
`
`response shall not be construed as an admission against interest in any manner. In
`
`particular, Patent Owner expressly reserves the right to raise an argument under
`
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`Case IPR2020-01189
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`Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert. granted,
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`141 S. Ct. 551 (2020).
`
`IV. CONCLUSION
`
`For the reasons set forth above, the grounds contained in the Petition fall far
`
`short of establishing, by a preponderance of the evidence, that any of claims 8, 10,
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`13, or 15 of the ’774 Patent are unpatentable. The abovementioned gaps in the
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`proffered evidence and substantive content of the Petition and cited evidence prove
`
`fatal to the Petition. Those challenged claims should be upheld.
`
`
`
`Respectfully submitted,
`
`BUTZEL LONG, PC
`
`/Shaun D. Gregory/
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`Date: June 1, 2021
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
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`
`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing PATENT
`
`OWNER’S RESPONSE TO PETITION FOR INTER PARTES REVIEW OF U.S.
`
`PAT. NO. 8,497,774 contains 3,852 words, excluding the parts of the petition
`
`exempted by 37 C.F.R. § 42.24(a), as measured by the word-processing system used
`
`to prepare this paper.
`
`BUTZEL LONG, PC
`
`/Shaun D. Gregory/
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`Date: June 1, 2021
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
`
`
`IWASHINGTON\000150560\0001\585600.v1-6/1/21
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that PURSUANT TO 37 C.F.R. §42.8(a)(2)
`
`the foregoing PATENT OWNER’S RESPONSE TO PETITION FOR INTER
`
`PARTES REVIEW OF U.S. PAT. NO. 8,497,774 is being served electronically via
`
`e-mail on June 1, 2021, in its entirety on the following counsel of record for
`
`Adam P. Seitz (Back-Up Counsel)
`USPTO Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
`
`BUTZEL LO