UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`LBT IP I LLC,
`
`Patent Owner
`___________
`
`
`
`Case No. IPR2020-01189
`U.S. Patent No. 8,497,774
`____________
`
`
`PETITIONER APPLE INC.’S OPPOSITION
`TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ...................................................................................... 1
`I.
`II. CLAIM CONSTRUCTION ....................................................................... 1
`III. THE PROPOSED AMENDMENTS DO NOT SATISFY THE
`REQUIREMENTS FOR A MOTION TO AMEND ................................. 3
`THE PROPOSED SUBSTITUTE CLAIMS IMPERMISSIBLY ATTEMPT TO
`BROADEN THE SCOPE OF THE CORRESPONDING CHALLENGED CLAIMS ....... 3
`THE PROPOSED AMENDMENTS ARE UNPATENTABLE UNDER 35 U.S.C.
`§ 112 ........................................................................................................ 4
`1. Written Description Support Is Required for the Amended Claims ..... 4
`2.
`Claims 20 and 27 Lack Written Description Support .......................... 5
`LBT’S CLAIM CONSTRUCTION LACKS WRITTEN DESCRIPTION SUPPORT .... 6
`C.
`IV. THE PROPOSED AMENDMENTS ARE OBVIOUS OVER THE
`ART CITED IN THE PETITION .............................................................. 7
`A. GROUND 1: CLAIMS 20–34 ARE OBVIOUS OVER SAKAMOTO ....................... 7
`Sakamoto teaches a request rate representing a repeating time
`1.
`interval for transmission of location coordinate packets to a target
`host ..................................................................................................... 7
`Sakamoto teaches a listen rate representing a repeating time
`interval for receipt of the location coordinate packets from a
`satellite navigation system ................................................................ 10
`Sakamoto teaches that the cycle timing/updated set of network
`communication protocols represent a timing schedule for at least
`one of the request rate and the listen rate........................................... 13
`LBT’s Arguments Distinguishing over Sakamoto Misapprehend
`Sakamoto’s Teachings ...................................................................... 15
`THE PROPOSED AMENDMENTS ARE OBVIOUS OVER
`ADDITIONAL PRIOR ART NOT PREVIOUSLY BEFORE THE
`BOARD ..................................................................................................... 16
`A. GROUND 4: CLAIMS 20–34 ARE OBVIOUS OVER SAKAMOTO IN VIEW OF
`HUANG ................................................................................................... 16
`HUANG IS ANALOGOUS, PRIOR ART ......................................................... 16
`HUANG IS NON-CUMULATIVE ART .......................................................... 17
`THE PROPOSED COMBINATION OF SAKAMOTO IN VIEW OF HUANG............. 17
`HUANG TEACHES THE AMENDED CLAIM LIMITATIONS ............................. 18
`
`2.
`
`3.
`
`4.
`
`A.
`
`B.
`
`V.
`
`B.
`C.
`D.
`E.
`
`
`
`i
`
`

`

`Huang’s Teachings ........................................................................... 18
`1.
`2. Motivation to Combine ..................................................................... 21
`The Added Limitations of the Amended Claims Were Not
`3.
`Considered During Prosecution of the ’774 Patent ............................ 23
`VI. CONCLUSION ......................................................................................... 24
`
`
`
`
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`
`Cases:
`
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) .................... 4
`
`Corning Optical Communications RF, LLC v. PPC Broadband, Inc.,
`IPR2014-00441, Paper 19 (Oct. 30, 2014) .............................................................. 5
`
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir.
`2014) ...................................................................................................................... 1
`
`Veeam Software Corp. v. Veritas Technologies, LLC, IPR2014-00090,
`Paper 48 (July 17, 2017) ......................................................................................... 4
`
`Statutes:
`35 U.S.C. § 103 ................................................................................................. 1, 24
`
`35 U.S.C. § 102(a) ................................................................................................ 16
`
`35 U.S.C. § 102(e) ................................................................................................ 16
`
`35 U.S.C. § 112 ............................................................................................. 4, 6, 24
`
`35 U.S.C. § 316(d)(3) ............................................................................................. 4
`
`Regulations:
`37 C.F.R. § 42.6 ........................................................................................................................ 28
`
`37 C.F.R. § 42.6(e) ................................................................................................................... 28
`
`37 CFR § 42.121(a)(2)(ii) ....................................................................................................... 3, 4
`
`
`
`
`
`
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`
`Petitioner, Apple Inc. submits this opposition to Patent Owner’s, LBT’s
`
`Motion to Amend. LBT’s Motion (Paper 16, “MTA”) should be denied because the
`
`amended claims improperly use claim construction to import limitations into the
`
`claims, lack written description support, and are unpatentable under § 103.
`
`II. CLAIM CONSTRUCTION
`LBT’s amendments should be rejected as excluding the only disclosed
`
`embodiment. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1311 (Fed.
`
`Cir. 2014) (“We normally do not construe claims in a manner that would exclude
`
`the preferred embodiment, especially where it is the only disclosed embodiment. In
`
`particular, ‘where claims can reasonably [be] interpreted to include a specific
`
`embodiment, it is incorrect to construe the claims to exclude that embodiment,
`
`absent probative evidence on the contrary.’”) (internal citations omitted) (emphasis
`
`added). In particular, the amended claims recite a “timing schedule,” and the ’774
`
`Patent Specification’s only description of a “schedule” is a refresh rate expressed as
`
`either a time interval between updates or an update frequency. LBT, however,
`
`improperly uses claim construction to limit the claims to when an event will occur,
`
`rather than a frequency of the event or a time interval between events.
`
`Rather than providing an explicit construction for the amendments, LBT
`
`characterizes the amended claims as a whole:
`
`
`
`1
`
`

`

`… This limitation, in conjunction with other limitations, further
`requires that the intervals represented by the request rate and the
`listen rate, as part of the updated set of network communication
`signaling protocols, represent a timing schedule for when the events
`occur.
`
`MTA, p. 17.1
`
`LBT’s construction requires that the schedule indicate “when”—rather than
`
`“how often”—the events occur. However, the ’774 Patent specifically gives “refresh
`
`rate 446” as one example of a schedule. (Ex. 1001, ’774 Patent, 12:59–60). This
`
`refresh rate 446 is represented, in FIG. 4 below, annotated, as a time period/interval
`
`between updates, rather than as a series of absolute times when events should occur,
`
`as LBT now asserts:
`
`Similarly, every example of a “schedule” described in the ’774 Patent is a time
`
`interval: a lost dog located “at 15 minute intervals” (id. at 14:1–15); a teenager
`
`borrowing a parent’s car tracked at “15 minute intervals,” with updates sent to the
`
`server at “60 minute intervals” (id. at 14:16–38); and a provider of construction
`
`
`1 Emphasis added unless otherwise noted.
`2
`
`
`
`

`

`equipment provided with updates “once per day” or at “1440 minute intervals” (id.
`
`at 14:39–57).
`
`The proper construction for the newly added “timing schedule” limitation
`
`should require only a refresh rate, expressed as either a time interval between updates
`
`or an update frequency, consistent with the ’774 Patent Specification. Any
`
`construction that requires when an event should occur should be rejected as
`
`importing limitations into the claim via claim construction, and excluding the only
`
`disclosed embodiment that a refresh rate is a time interval or update frequency.
`
`III. THE PROPOSED AMENDMENTS DO NOT SATISFY THE
`REQUIREMENTS FOR A MOTION TO AMEND
`A. The Proposed Substitute Claims Impermissibly Attempt to
`Broaden the Scope of the Corresponding Challenged Claims
`
`A proposed amendment in an Inter Partes Review may be denied where the
`
`amendment seeks to enlarge the scope of the claims of the patent. 37 CFR
`
`§ 42.121(a)(2)(ii). LBT proposes amending the claims to require that “an updated
`
`set of network communication signaling protocols associated with at least one of a
`
`request rate representing a repeating time interval for [[of]] location coordinate
`
`packets to be communicated to a target host and a listen rate representing a repeating
`
`time interval for receipt of the location coordinate packets from a satellite navigation
`
`system.” MTA, pp. 25–26. The Challenged Claims of the ’774 Patent require that
`
`request rate and listen rate actually be for the corresponding packets. In other words,
`
`
`
`3
`
`

`

`the challenged claims recite the species, and the amended claims recite the species
`
`“representing” the genus. As best understood, under LBT’s proposal, a system where
`
`a refresh rate merely “represented” (but did not include) the actual transmission or
`
`reception rate for the corresponding type of packet would satisfy this limitation but
`
`would not satisfy the unamended limitation in the Challenged Claims. Therefore, the
`
`amended claims are broader in scope than the Challenged Claims and should be
`
`rejected.
`
`B.
`
`The Proposed Amendments Are Unpatentable Under 35 U.S.C.
`§ 112
`1. Written Description Support Is Required for the Amended
`Claims
`
`To satisfy the written description requirement, a patent specification must
`
`describe the claimed invention in sufficient detail that one skilled in the art can
`
`reasonably conclude that the inventor had possession of the claimed invention as of
`
`the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir.
`
`2010); Veeam Software Corp. v. Veritas Technologies, LLC, IPR2014-00090, Paper
`
`48 at 17 (July 17, 2017). A motion to amend may not propose substitute claims that
`
`introduce new subject matter, i.e., any addition to the claims that lacks sufficient
`
`support in the subject patent’s original disclosure. 35 U.S.C. § 316(d)(3); 37 C.F.R.
`
`§ 42.121(a)(2)(ii). “[I]t is inadequate to show written description support for just the
`
`feature added by the proposed substitute claim. Instead, the Patent Owner must show
`
`
`
`4
`
`

`

`written description support for the entire claim.” Corning Optical Communications
`
`RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 at 4 (Oct. 30, 2014).
`
`2.
`
`Claims 20 and 27 Lack Written Description Support
`
`Substitute independent Claims 20 and 27 add the new limitation “a [request
`
`rate]/[listen rate] representing a repeating time interval [for receipt of location
`
`packets]/[for the location packets to be communicated].” There is not adequate
`
`written description support for this limitation. First, neither the word “represent” nor
`
`any variation thereof appears in the Specification of the ’774 Patent at all. Second,
`
`there is no disclosure of any “time interval” that repeats, and the word “repeating”
`
`only appears in the ’774 Specification in the context of a repeatedly tapping morse
`
`code to generate distress signal. ’774 Patent, 9:58–62. Third, there is no disclosure
`
`of how a “rate” that “represents” a “time interval,” repeating or otherwise, is in any
`
`way different from any other rate disclosed in the ’774 Patent. Accordingly,
`
`amending the claims as proposed by LBT would either introduce redundant
`
`surplusage into the claims or introduce a distinction unsupported by the
`
`Specification.
`
`For alleged support of this limitation, LBT cites four paragraphs that broadly
`
`refer to an “update rate”: ¶¶ [0053], [0064], [0065], and [0066]. MTA, 6–7. These
`
`sections, however, simply describe what was claimed prior to LBT’s proposed
`
`amendments: a communication protocol has an associated request rate 420 or listen
`
`
`
`5
`
`

`

`rate 425, which may be specified by a frequency or an interval. None of these
`
`sections (or any other portion of the Specification of the ’774 Patent) provides
`
`adequate written description for a rate “representing a repeating time interval.”
`
`For at least the above reasons, substitute claims 20 and 27 (and dependent
`
`claims therefrom) are invalid under 35 U.S.C. § 112, ¶ 1.
`
`C. LBT’s Claim Construction Lacks Written Description Support
`LBT’s proposed construction for the limitation “representing a timing
`
`schedule for at least one of the request rate and the listen rate” requires that the
`
`network communication signaling protocols “represent a timing schedule for when
`
`the events occur.” MTA, p. 17; see also § II, supra. This claim construction is not
`
`supported by the ’774 Patent Specification. In support of the construction, LBT
`
`refers only to Ex. 1001, 12:1–18. MTA, pp. 18–19. This cited section nowhere
`
`describes a schedule as indicating “when the events occur.” Rather, the sections cited
`
`by LBT merely specify that a schedule is used “to determine if it should listen” for
`
`location coordinates and to “determine[] whether to transmit [a location update] to
`
`target host.” ’774 Patent, 12:1–18. The ’774 Patent never discusses a schedule as
`
`indicating “when” an event should occur; rather, the term “schedule” is used
`
`consistently to mean “refresh rate,” and the portions of the ’774 Specification cited
`
`by LBT are consistent with this interpretation.
`
`
`
`
`
`
`
`6
`
`

`

`IV. THE PROPOSED AMENDMENTS ARE OBVIOUS OVER THE ART
`CITED IN THE PETITION
`
`Each of LBT’s newly added limitations is taught or otherwise rendered
`
`obvious by Sakamoto or Sakamoto in combination with Huang.
`
`A. Ground 1: Claims 20–34 Are Obvious over Sakamoto
`The Petition sets forth how Sakamoto renders obvious original Claims 1 and
`
`8, upon which substitute Claims 20 and 27 are based. Sakamoto also teaches each of
`
`LBT’s amended limitations.
`
`1.
`
`Sakamoto teaches a request rate representing a repeating time
`interval for transmission of location coordinate packets to a
`target host
`
`First, Sakamoto describes how the “position information communication
`
`terminal” transmits location update packets at a regular rate and that this rate (and
`
`the corresponding interval) changes are based on the positioning mode. For example,
`
`Sakamoto discloses that in normal or high sensitivity positioning modes, position
`
`can be tracked in real time by sending “position search request message[s]” at a
`
`“short cycle.” (Ex. 1004, Sakamoto at ¶¶ [0031]–[0034] (describing how a position
`
`search request message is sent from the positioning management server 2 to the
`
`position information communication terminal); ¶ [0040] (describing how to perform
`
`real-time tracking of the position information communication terminal “in a short
`
`cycle” by maintaining the mobile data connection).
`
`
`
`7
`
`

`

`Second, Sakamoto teaches how the position information communication
`
`terminal responds to such a position search request message with a “search response
`
`message” including “position information”:
`
`The position information communication terminal 1 receiving the
`position search request message acquires the positioning mode
`information in the position search request message in the positioning
`control unit 13, and the GPS receiver 10 starts the position detection
`operation in the mode designated by the positioning mode
`information. The position detecting operation of the position
`information communication terminal 1 has been described in the first
`embodiment and the description thereof will not be repeated here.
`
`When the position information communication terminal 1 to be
`searched succeeds in positioning, the positioning control unit 13
`transmits a positioning control message (search response message)
`including the position information to the position management
`server 2 via the communication control unit 11. As shown in the format
`in FIG. 5, the search response message is composed of a server
`address, a search terminal address, a message identifier, a search result,
`and position information.
`
`Id. at ¶¶ [0034]–[0035].
`
`Mr. Andrews’s undisputed testimony is that “short cycle” tracking would
`
`involve sending these position search request messages at a “regular” rate, i.e., such
`
`requests would be transmitted at a “repeating time interval” (i.e., with a particular
`
`frequency) to the position information communication terminal. (Ex. 1003, Andrews
`
`
`
`8
`
`

`

`Declaration at ¶ 91 (short-cycle tracking involves a regular request rate); ¶ 93
`
`(different regular cycle rates would be needed for different applications)). A
`
`POSITA would have understood that a position information communication
`
`terminal with its GPS unit powered off also has an associated transmission rate of
`
`0Hz. Id. at ¶ 94. Thus, Sakamoto teaches the amended limitation at least by virtue of
`
`the disclosed short-cycle tracking of the position information communication
`
`terminal.
`
`Third, the Petition discusses Sakamoto’s teaching the positioning control unit
`
`13 (electrical power resource management component) of the position information
`
`control terminal adjusts the positioning mode (i.e., the request rate representing the
`
`repeating time interval) responsive to an estimated charge level of the charging unit,
`
`and each of these positioning modes has at least one associated refresh rate:
`
`Paper 1, Petition, p. 34 (red annotation added (showing the different refresh rates for
`
`the transmission request rate)); see also id. at 31–34.
`
`
`
`
`
`9
`
`

`

`Because Sakamoto teaches sending a position response to the server 2 (i.e.,
`
`the claimed “transmission of location coordinate packets to a target host”) at a time
`
`interval represented by the “short cycle” (i.e., the claimed “repeating time interval”),
`
`Sakamoto teaches the new claim limitation.
`
`2.
`
`Sakamoto teaches a listen rate representing a repeating time
`interval for receipt of the location coordinate packets from a
`satellite navigation system
`
`Sakamoto describes how the “position information communication terminal”
`
`receives GPS location coordinate packets at a regular rate and that this rate (and the
`
`corresponding interval) changes based on the positioning mode. For example,
`
`Sakamoto teaches that, “in the high sensitivity positioning mode, the power of the
`
`GPS receiver 10 is continuously turned on.” Sakamoto, ¶ [0036]. According to Mr.
`
`Andrews’s undisputed testimony:
`
`[A] continuously operating GPS receiver (such as Sakamoto’s GPS
`receiver operating in high sensitivity positioning mode) has an
`associated update rate. For example, many GPS receivers generate a
`position update once per second (i.e., at a rate of 1 Hz). Other GPS
`receivers may generate a position update more or less frequently, such
`as ten times per second or once every ten seconds (i.e., 10 Hz or 0.1
`Hz).
`
`Andrews Declaration, ¶ 90. That Sakamoto’s GPS refresh rate satisfies this
`
`limitation is confirmed by proposed dependent claim 32, which specifies that “the
`
`listen rate of the location coordinates comprises a global positioning system (GPS)
`
`
`
`10
`
`

`

`system refresh rate of the location coordinates.” MTA, at 30. Because Sakamoto’s
`
`position information communication terminal uses a GPS receiver, a POSITA would
`
`have understood that Sakamoto’s position information communication terminal,
`
`when continuously operated, has an associated update rate and that, as such, would
`
`“listen” for GPS packets at a “repeating time interval.” Andrews Declaration, ¶ 90
`
`(Mr. Andrews giving “once per second” and “once every ten seconds” as refresh
`
`rates or examples of a “repeating time interval for receipt of the location coordinate
`
`packets from a satellite navigation system.”).
`
`Similarly, when in “normal sensitivity positioning mode,” Sakamoto’s
`
`position information communication terminal listens for GPS packets at a decreased
`
`but still regular interval. For example, Sakamoto describes how the server
`
`periodically (at “the cycle set in advance in the position information database”) sends
`
`a “satellite signal level request message.” Sakamoto, ¶ [0037]. This causes the
`
`terminal to monitor the satellite signal level for a specified length of time and send
`
`a “satellite signal level response message” with signal strength data to the server. Id.
`
`As Mr. Andrews explains, “monitoring the satellite signal level in this way would
`
`involve powering up the GPS receiver to listen for location coordinate packets such
`
`that their signal level can be measured.” Andrews Declaration, ¶ 92. Thus, Sakamoto
`
`in normal positioning mode teaches “a listen rate representing a repeating time
`
`interval for receipt of the location coordinate packets from a satellite navigation
`
`
`
`11
`
`

`

`system” at least by virtue of “the cycle set in advance in the position information
`
`database.” And again, a POSITA would have understood that a position information
`
`communication terminal with its GPS unit powered off also has an associated refresh
`
`rate of 0Hz. Id. at ¶ 94.
`
`Furthermore, as set forth in the Petition and discussed above, Sakamoto
`
`teaches that the positioning control unit 13 (electrical power resource management
`
`component) of the position information control terminal adjusts the positioning
`
`mode (and therefore the listen rate representing the repeating time interval)
`
`responsive to estimated charge level of the charging unit, and each of these
`
`positioning modes has at least one associated refresh rate:
`
`Petition, p. 34. (red annotation added (showing the different refresh rates for the
`
`
`
`listen rate)).
`
`
`
`12
`
`

`

`3.
`
`Sakamoto teaches that the cycle timing/updated set of network
`communication protocols represent a timing schedule for at
`least one of the request rate and the listen rate.2
`
`Sakamoto’s short-cycle tracking request rate and GPS listen rate “represent[]
`
`a timing schedule” for the request rate and the listen rate, respectively. In particular,
`
`Sakamoto teaches refresh rates for the location coordinate packets transmitted to a
`
`target host and received from a satellite navigation system. See §§ 1, 2 supra. As
`
`discussed above in § II, the disclosed examples of a “schedule” correspond to either
`
`a time interval or an update frequency, no different from the short-cycle tracking
`
`request rate or GPS listen rate present in Sakamoto and explained by Mr. Andrews.
`
`
`2 The ’774 Specification does not seem to draw a distinction between a set of cycle
`
`timings and a set of network communication protocols. For example, the ’774 Patent
`
`gives, as one example of a communication signaling protocol, “(X Y Z).” ’774
`
`Patent, 11:42. These same X, Y, and Z values are described, in the context of FIG.
`
`5, as “request rate 420,” “location coordinates packet 422,” and “listen rate 425,”
`
`respectively. Id. at 13:1-12. In the same context, the ’774 Patent describes “adjusting
`
`the cycle timing of the request rate 420 … and listen rate 422.” For this reason, the
`
`claim amendments requiring that the cycle timing/updated set of network
`
`communication protocols “represent a timing schedule for at least one of the request
`
`rate and the listen rate” are treated together.
`
`
`
`
`
`13
`
`

`

`Sakamoto, ¶¶ [0037], [0040] (discussing various time cycles); Andrews Declaration,
`
`¶¶ 89–94 (explaining these cycles); see also Paper 9, Institution Decision at 22
`
`(“Petitioner also shows that Sakamoto either teaches, or an ordinarily skilled artisan
`
`would have appreciated from Sakamoto, that each of these modes has associated
`
`‘listen rate[s] of the location coordinate packets from a satellite navigation
`
`system.’”). As such, each of Sakamoto’s positioning modes has a set associated
`
`refresh rate, as shown below:
`
`
`
`Petition, p. 34 (red annotation added (showing the set of refresh rates for the high
`
`sensitivity positioning mode)).
`
`Finally, as argued above, the ’774 Patent gives “refresh rate” as one example
`
`of a “schedule.” ’774 Patent, 12:59–60. Thus, for at least that reason, Sakamoto’s
`
`disclosure of per-mode refresh rates for the listen rate and request rate teaches or
`
`otherwise renders obvious LBT’s proposed added limitation requiring that the
`
`
`
`14
`
`

`

`updated set of network communication signaling protocols and cycle timings
`
`represent a timing schedule for at least one of the request rate and the listen rate.
`
`4.
`
`Arguments Distinguishing
`LBT’s
`Misapprehend Sakamoto’s Teachings
`
`over
`
`Sakamoto
`
`LBT argues that “Sakamoto does not teach or suggest ‘a timing schedule for
`
`at least one of the request rate and the listen rate.’” MTA, p. 21. In support of this
`
`argument, LBT argues that “a positioning mode is a communication signaling
`
`protocol, in contrast to ‘the updated set of network communication signaling
`
`protocols…representing a timing schedule for at least one of the request rate and the
`
`listen rate’ as required by the proposed amended substitute claims.” Id. As best
`
`understood, LBT is attempting to distinguish the claims of the ’774 Patent from
`
`Sakamoto by arguing that Sakamoto teaches neither updating the reported position
`
`of the position information communication terminal at a repeating time interval nor
`
`receiving GPS packets at a repeating time interval. The undisputed evidence,
`
`however, is that Sakamoto has at least one associated (regular) refresh rate for each
`
`positioning mode. Andrews Declaration, ¶¶ 89–94. Thus, when Sakamoto updates
`
`the positioning mode based on battery level (a point LBT does not dispute),
`
`Sakamoto also updates the current tracking request rate and GPS listen rate to reflect
`
`the current positioning mode. As such, LBT’s proposed amendments fail to render
`
`claims 20 and 27 patentable over Sakamoto.
`
`
`
`15
`
`

`

`V. THE PROPOSED AMENDMENTS ARE OBVIOUS OVER
`ADDITIONAL PRIOR ART NOT PREVIOUSLY BEFORE THE
`BOARD
`
`To the extent LBT contends that Sakamoto fails to teach or suggest the newly
`
`added claim limitations, these new limitations represent elements long known in the
`
`art. For example, U.S. Patent No. 7,826,968 to Huang, at al. (Ex. 2011, Huang),
`
`considered during the prosecution of the ’774 Patent, teaches dynamically updating
`
`a listen rate for a GPS receiver based on a battery level of the GPS receiver.
`
`A. Ground 4: Claims 20–34 Are Obvious Over Sakamoto in View of
`Huang
`
`The Petition establishes how Sakamoto renders obvious original Claims 1 and
`
`8, upon which substitute Claims 20 and 27 are based. To the extent Sakamoto does
`
`not already do so, Huang teaches and renders obvious the additional new limitation
`
`in the substitute claims. Ground 4 relies on Huang to teach “a listen rate representing
`
`a repeating time interval” and “a timing schedule for at least one of the request rate
`
`and the listen rate.”
`
`B. Huang Is Analogous, Prior Art
`Huang was filed on April 30, 2007, and published on October 30, 2008,
`
`qualifying as prior art to the ’774 Patent under at least 35 U.S.C. § 102(a), (e) (Pre-
`
`AIA). Huang at (22), (65). Huang teaches a battery-powered GPS receiver. Huang
`
`at Abst., 5:5–7. Huang discloses a system where GPS update frequency is reduced
`
`in response to a low battery capacity to reduce power consumption of the device.
`
`
`
`16
`
`

`

`Huang 5:12–14; 5:47–49. Because, like the ’774 Patent, Huang teaches monitoring
`
`the battery level of the portable communication terminal and reducing the GPS
`
`update frequency responsive to a low battery condition in order to reduce power
`
`consumption, Huang is in the same field of endeavor and is pertinent to a problem
`
`to be solved by the claimed invention in the ’774 Patent. Andrews Supplemental
`
`Declaration, ¶ 10. Therefore, Huang is analogous art to the claimed invention in the
`
`’774 Patent.
`
`C. Huang Is Non-Cumulative Art
`As applied below, Huang is used to teach the newly added limitations
`
`proposed in the Motion to Amend. Because these limitations were never before the
`
`Examiner when Huang was considered, Huang’s teachings regarding these
`
`limitations are non-cumulative relative to the claims as presented during original
`
`examination. Any argument by LBT that reliance on Huang is cumulative with the
`
`use of Huang during prior examination would be tantamount to an admission that
`
`the proposed amendments do not change the scope of the claims.
`
`D. The Proposed Combination of Sakamoto in View of Huang
`To the extent LBT contends that Sakamoto does not teach a “a listen rate
`
`representing a repeating time interval for receipt of the location coordinate packets
`
`from a satellite navigation system,” Huang teaches such, and it would have been
`
`obvious to modify Sakamoto’s system with the teachings of Huang. In the proposed
`
`
`
`17
`
`

`

`combination, Sakamoto’s GPS listen rate is dynamically adapted according to the
`
`mapping function disclosed by Huang. Rather than the user specifying the battery
`
`thresholds where the system switches to normal sensitivity positioning mode (as
`
`taught by Sakamoto), the user would specify the battery thresholds where update
`
`frequency begins to decrease (e.g., 75% in Huang’s FIG. 5) and where it reaches its
`
`minimum value (e.g., 25% in Huang’s FIG. 5). Consistent with the teachings of
`
`Sakamoto, the user would also specify the lowest update frequency (corresponding
`
`to Sakamoto’s “short-cycle” tracking and “cycle set in advance” satellite strength
`
`update interval).
`
`E. Huang Teaches the Amended Claim Limitations
`Huang teaches the position of a GPS receiver is updated at a regular time
`
`interval, and this regular time interval is changed dynamically based on one of
`
`several factors including battery level. Huang, Abst; 5:5–31.
`
`1. Huang’s Teachings
`a)
`“a listen rate representing a repeating time
`interval for receipt of the location coordinate packets
`from a satellite navigation system”
`
`Huang discloses a system wherein the update rate of a GPS system is adjusted
`
`based on a battery level of the GPS device. Huang, 5:5–7 (“In some embodiments,
`
`the position locating frequency of the GPS device 100 is determined according to a
`
`remaining capacity of a battery (not shown) of the GPS device 100.”). For example,
`
`
`
`18
`
`

`

`Huang’s FIG. 5 shows a graph depicting the update frequency as a function of the
`
`fraction of remaining battery capacity:
`
`
`
`Andrews Supplemental Declaration, ¶ 8 (annotating Huang, FIG. 5; red annotation
`
`added). Thus, as depicted, Huang’s system updates the position 10 times per second
`
`when the battery is at more than 75% capacity, then at a linearly decreasing rate
`
`when the battery is between 25% and 75% (so that, for example, the position is
`
`updated 6 times per minute when the battery is at 50% capacity as depicted in the
`
`red annotation), down to a minimum of 2 times per second when the battery is at
`
`25% capacity or lower. Andrews Supplemental Declaration, ¶ 8.
`
`Huang’s system implements this dynamic update frequency by selectively
`
`receiving GPS signals:
`
`
`
`19
`
`

`

`The control signal is provided by baseband unit 122 or other elements.
`When the control signal is activated, antenna 121 receives the
`wireless signal group. When the control signal is de-activated,
`antenna 121 does not receive the wireless signal group. Baseband
`unit 122 processes the wireless signal group to generate a position
`signal S. The position signal is updated every time interval.
`
`Huang, 2:38–44. Thus, Huang updates the GPS refresh rate by controlling the listen
`
`rate of the GPS receiver. Ex. 1077, Andrews Supplemental Declaration, ¶ 4. For at
`
`least this reason, Huang teaches or otherwise renders obvious “a listen rate
`
`representing a repeating time interval for receipt of the location coordinate packets
`
`from a satellite navigation system.”
`
`b)
`the updated set of network communication
`signaling protocols […] representing a timing schedule
`for […] the listen rate;”
`
`As discussed for Sakamoto, the ’774 Patent gives “refresh rate” as one
`
`example of a “sched