Trials@uspto.gov
`571-272-7822
`
`Paper 43
`Date: August 22, 2023
`
`
`
`
`
`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.
`
`ORDER
`Conduct of the Proceeding
`37 U.S.C. § 42.5
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 43
`Date: August 22, 2023
`
`
`
`
`
`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.
`
`ORDER
`Conduct of the Proceeding
`37 U.S.C. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2020-01189
`Patent 8,497,774 B2
`
`
`A conference call in the above proceeding was held on August 21,
`2023, between respective counsel for the parties and Judges Hudalla,
`McShane, and Dirba. The purpose of the call was to discuss procedures for
`the remand of this case from the Court of Appeals for the Federal Circuit.
`See Papers 41, 42.
`In particular, the Federal Circuit vacated and remanded our
`obviousness determinations with respect to claims 8, 10, 13, and 15 of the
`’774 patent. Paper 42, 13. The court’s decision hinged on its construction
`of “multitude of threshold values” in the following limitation of claim 8:
`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.
`Ex. 1001, 16:53–61 (emphasis added). The court stated that “[t]he plain and
`ordinary meaning of multitude in the ’774 patent does not encompass two
`threshold values.” Paper 42, 11. Further clarifying its construction, the
`court stated that “multitude does not include two but must include as few as
`five threshold values.” Id. at 13. Thus, the court vacated our determination
`that Sakamoto’s two battery power level thresholds teach the claimed
`“multitude of threshold values.” Id.
`The court also noted that we did not address Petitioner’s alternative
`argument that Sakamoto teaches at least four threshold values—two battery
`level thresholds and two GPS signal level thresholds. Paper 42, 13.
`Accordingly, the court remanded this case to us to determine “whether
`multitude encompasses three or four threshold values and whether the two
`
`2
`
`
`
`IPR2020-01189
`Patent 8,497,774 B2
`
`sets of threshold values disclosed in Sakamoto teach a multitude of threshold
`values.” Id.
`Petitioner only has put forth a single unpatentability theory for which
`it contends that Sakamoto teaches more than two threshold values, i.e., that
`Sakamoto’s two battery level thresholds and two GPS signal level thresholds
`together teach the recited “multitude of threshold values.”1 See Paper 25,
`15–19. Accordingly, we ask the parties to brief whether—as a matter of
`claim construction—the “threshold values” in the recited “multitude of
`threshold values” are limited to battery power level threshold values or else
`whether they may also include signal level threshold values. The panel feels
`this issue may be dispositive given the present posture of the case. A
`schedule for simultaneous opening and responsive claim construction briefs
`is set forth below. No new evidence may be submitted except file histories
`for patent applications related to the ’774 patent (if necessary).
`It is hereby
`ORDERED that Petitioner and Patent Owner are each authorized to
`file one opening brief limited to addressing the construction of “a multitude
`of threshold values” in claim 8 and whether the recited “threshold values”
`
`
`1 During the call, Petitioner sought leave to develop further unpatentability
`theories based on Sakamoto to address the possibility that a “multitude of
`threshold values” might include 3–7 thresholds. Patent Owner countered
`that this was unnecessary given that Patent Owner had already argued in its
`Response that a “multitude” was more than two (see Paper 17, 14–17) and
`given that Petitioner had already put forth a new responsive unpatentability
`theory in its Reply (see Paper 25, 15–19). We agree with Patent Owner and
`do not anticipate opening the record on remand to further unpatentability
`theories.
`
`3
`
`
`
`IPR2020-01189
`Patent 8,497,774 B2
`
`are limited to battery power level threshold values or else whether they may
`also include signal level threshold values;
`FURTHER ORDERED that each opening brief shall be seven pages
`or less in length and filed no later than September 6, 2023;
`FURTHER ORDERED that Petitioner and Patent Owner are each
`authorized to file one responsive brief limited to addressing the arguments in
`the other party’s opening brief;
`FURTHER ORDERED that any responsive brief shall be seven pages
`or less in length and filed no later than September 20, 2023; and
`FURTHER ORDERED that Petitioner and Patent Owner shall not file
`any additional evidence with their briefs with the exception of file histories
`for related patent applications.
`
`4
`
`
`
`IPR2020-01189
`Patent 8,497,774 B2
`
`FOR PETITIONER:
`Jennifer Bailey
`Jennifer.bailey@eriseip.com
`
`Adam Seitz
`Adam.seitz@eriseip.com
`
`Robin Snader
`Robin.snader@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Shaun Gregory
`sgregory@taftlaw.com
`
`
`5
`
`
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