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’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`____________
`
`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’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ..........................................................................................1
`I.
`II. CLAIM CONSTRUCTION ...........................................................................1
`A. “MULTITUDE”............................................................................................... 1
`1. Prosecution History Disclaimer Must Be “Clear and Unequivocal” ........ 2
`2. Patent Owner’s Proposal Lacks Written Description Support .................. 7
`III. THE CLAIMS OF THE ’774 PATENT ARE INVALID AS OBVIOUS .. 10
`A. LIMITATIONS 1(E) AND 8(C): SAKAMOTO TEACHES ADJUSTING CYCLE RATES 10
`1. Patent Owner’s Attempt to Read a Schedule into the Claims Should Be
`Rejected .........................................................................................................10
`2. Patent Owner Fails to Address the Undisputed Evidence that Each of
`Sakamoto’s Positioning Modes Has an Associated Regular Update Rate.......12
`a) Sakamoto’s normal positioning mode has a regular refresh rate ...........13
`b) Sakamoto’s high sensitivity positioning mode has a regular refresh rate
`
`14
`c) Sakamoto’s stop-position searching mode has a regular refresh rate ....15
`d) Patent Owner does not dispute that switching the positioning mode
`updates the communication signaling protocol ............................................15
`B. LIMITATION 8(D): SAKAMOTO TEACHES A “MULTITUDE” OF THRESHOLDS ......15
`1. Sakamoto Teaches at Least Four Threshold Values .................................15
`2. Petitioner’s Argument Applying Sakamoto’s Additional Thresholds
`Properly Responds to Patent Owner’s New Claim Construction ....................18
`IV. CONCLUSION ............................................................................................ 19
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`TABLE OF AUTHORITIES
`
`
`Cases:
`
`3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315 (Fed. Cir.
`2013) ...................................................................................................................... 3
`
`Apple Inc. v. Andrea Electronics Corp., 949 F.3d 697 (Fed. Cir. 2020) ................ 19
`
`Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040 (Fed. Cir. 2016) ........................ 3
`
`Gen. Hosp. Corp. v. Sienna Biopharm., Inc., 888 F.3d 1368 (Fed. Cir.
`2018) ...................................................................................................................... 7
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359
`(Fed. Cir. 2016) .................................................................................................... 18
`
`Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320 (Fed. Cir. 2000) ............. 7, 10
`
`SanDisk Corp. v. Memorex Prod., Inc., 415 F.3d 1278 (Fed. Cir.
`2005) ...................................................................................................................... 3
`
`
`Statutes:
`35 U.S.C. § 102 ...................................................................................................... 2
`
`35 U.S.C. § 312(a)(3) ............................................................................................ 18
`
`
`Regulations:
`37 C.F.R. § 42.6 .................................................................................................... 27
`
`37 C.F.R. § 42.6(e) ............................................................................................... 27
`
`37 C.F.R. § 42.121(b)(1) ......................................................................................... 9
`
`
`
`ii
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`I.
`
`INTRODUCTION
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`Patent Owner’s Response (Paper 17, “Response”) turns on two primary issues.
`
`First, Patent Owner argues Sakamoto does not teach “a schedule of repeating events
`
`or any updating of such schedule,” a requirement Patent Owner contends is
`
`“implicitly required by” limitations [1(e)] and [8(c)] of the claims of the ’774 Patent.
`
`Patent Owner’s Motion to Amend (Paper 16, “Motion to Amend”) at 21; see also
`
`Response at 9,12. Second, Patent Owner argues that “a multitude in the context of
`
`the ’774 Patent is necessarily more than two” and that Sakamoto’s two thresholds
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`are therefore insufficient to form a multitude. Response at 14. As discussed below,
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`the Board rejected these arguments at the institution stage, and Patent Owner offers
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`nothing new compelling a different result in a final written decision.
`
`II. CLAIM CONSTRUCTION
`A.
`“Multitude”
`
`In its Preliminary Response (Paper 8, “POPR”) Patent Owner argued that
`
`Sakamoto’s disclosure of two thresholds was insufficient to teach the claimed
`
`“multitude of threshold values.” POPR at 15–17. Responsive to this argument, the
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`Board interpreted “multitude” to be synonymous with “plurality” based on
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`substantially identical dictionary definitions for the two terms and one dictionary
`
`that defined “plurality” as “multitude.” Paper 9 (“Institution Decision”) at 11–12. As
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`best understood, Patent Owner’s proposed interpretation for the claim term
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`“multitude” is “necessarily more than two.” Response at 14, 16. Such an
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`interpretation lacks any support in the intrinsic or extrinsic evidence, and the Board
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`should maintain the interpretation of “multitude” as being synonymous with
`
`“plurality.”
`
`1.
`
`Prosecution History Disclaimer Must Be “Clear and
`Unequivocal”
`
`In support of its proposed interpretation of “multitude,” Patent Owner argues
`
`that prosecution history disclaimer should apply. Response at 14–16. In particular,
`
`Patent Owner argues the original applicant for the ’774 Patent (“Applicant”)
`
`disclaimed a system with only two threshold values for intermittently activating or
`
`deactivating the location tracking circuitry. Id. In support of this argument, Patent
`
`Owner relies upon Applicant’s amendment to incorporate as-filed claim 17, which
`
`recited “the power level compris[ing] a multitude of threshold values determined by
`
`a 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.” Id. Patent Owner argues that, by incorporating
`
`this limitation into rejected claim 8 to overcome the 35 U.S.C. § 102 rejection thereof
`
`as anticipated by U.S. Patent No. 7,826,968 to Huang et al. (Ex. 2011, Huang),
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`Applicant limited the scope of the claim term “multitude” to “necessarily greater
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`than two.” Response at 14–16. Per Patent Owner, Huang discloses two thresholds.
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`Response at 15. Patent Owner contends that “[b]y adding the ‘multitude of threshold
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`values’ limitation to claim 8 in order to overcome prior art that disclosed two
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`thresholds, the amendment is intrinsic evidence of the patentee’s clear intent to
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`define ‘multitude’ as more than two.” Response at 16.
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`Where a party relies on prosecution history statements to exclude meaning
`
`that would otherwise be captured by the intrinsic record, those statements must be
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`“clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d
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`1315, 1325 (Fed. Cir. 2013). “Where the alleged disavowal is ambiguous, or even
`
`amenable to multiple reasonable interpretations, [the Federal Circuit has] declined
`
`to find prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040,
`
`1045 (Fed. Cir. 2016) (internal citations removed); SanDisk Corp. v. Memorex
`
`Prod., Inc., 415 F.3d 1278, 1287 (Fed. Cir. 2005) (“There is no ‘clear and
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`unmistakable’ disclaimer if a prosecution argument is subject to more than one
`
`reasonable interpretation[.]”).
`
`Here, the language incorporated into claim 8 during original examination to
`
`distinguish over Huang includes significantly more than adding a “multitude of
`
`threshold values,” as asserted by Patent Owner. Response at 16. Indeed, the language
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`of as-filed claim 17 includes at least four distinct limitations: (1) a multitude of
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`thresholds; (2) determined by a user or system administrator; (3) to intermittently
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`activate or deactivate the location tracking circuitry to conserve power of the
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`charging unit; and (4) in response to the estimated charge level of the charging unit.
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`Huang teaches a GPS receiver with a dynamic update interval. Huang, Abst.
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`Like the ’774 Patent, Huang changes the GPS update interval based on the charge
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`level and velocity of the GPS device to conserve power. Cf. Huang, 5:43–50 with
`
`Ex. 1001 (“’774 Patent”), Abst. Unlike the ’774 Patent, however, Huang teaches
`
`that the update frequency for the GPS is automatically determined using one of a
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`variety of “mapping function[s]” of the speed of movement. See, e.g., Huang, 1:66–
`
`2:6. For example, FIG. 2A shows an example mapping function where the update
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`frequency (in updates per second) is one-tenth of the speed (in kilometers per hour),
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`up to a maximum of ten updates per second. Id. at FIG. 2A.
`
`Notably, Applicant did not present any substantive arguments distinguishing
`
`this amendment over Huang, but only relied on the Examiner’s indication that claim
`
`17 was allowable. Ex. 1002, (’774 File History) at 297–299. For example, there was
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`no argument from Applicant during original examination that Huang allegedly
`
`teaches two thresholds, which is allegedly different from the claimed “multitude of
`
`thresholds.” In fact, Applicant was silent as to Huang’s thresholds teaching and did
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`not discuss the claimed “multitude of thresholds” or any alleged difference between
`
`as-filed claim 17 and Huang.
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`Patent Owner’s after-the-fact characterization of the amendment during
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`original examination as being to overcome Huang’s alleged teaching of only two
`
`thresholds conflicts with Huang’s actual teachings. Huang teaches more than two
`
`thresholds. Ex. 1077, Andrews Supplemental Declaration, at ¶ 7. Patent Owner cites
`
`Huang’s discussion of FIG. 2A at 2:55–3:8 to claim that Huang has thresholds (only)
`
`at 50 km/h and 100km/h. Response at 14–15. However, Patent Owner misreads
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`Huang’s teachings: the annotated points on FIG. 2 are simply examples of the update
`
`frequency at those particular points on the velocity curve. Andrews Supplemental
`
`Declaration, at ¶ 6. Patent Owner concedes that 50 km/h and 100km/h are “speed-
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`of-movement thresholds.” Response at 14–15. But the plain teachings of Huang
`
`indicate that any other speed between those points also has an associated update rate
`
`defined by the mapping function. Andrews Supplemental Declaration, at ¶ 7. (citing
`
`Huang at 2:53–3:15). For example, the annotated version of FIG. 2A below shows
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`the additional speed-of-movement thresholds corresponding to the speeds of 60
`
`km/h (the point on the mapping function indicated in red) and 80 km/h (the point on
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`the mapping function indicated in blue).
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`Andrews Supplemental Declaration at ¶ 7 (annotating Huang, FIG. 2A; red and blue
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`annotations added). In other words, in the example of FIG. 2A, every speed (to the
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`granularity of speed measurement of the GPS device) below 100 km/h is a speed-of-
`
`movement threshold for exactly the same reason that 50 km/h is—when the speed
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`reaches that speed, the update frequency changes to the associated rate. As Huang
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`summarizes for the embodiment of FIG. 2A, “the frequency of generating the
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`position signal by baseband unit 122 is higher when the speed of movement of the
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`GPS device 100 is faster.” Huang, 3:5–8.
`
`Given Applicant failed to provide any arguments to distinguish the amended
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`claims over the teachings of Huang, and given Huang teaches a “multitude” of
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`thresholds under Patent Owner’s construction, any alleged prosecution disclaimer is
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`“ambiguous, or even amenable
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`to multiple
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`reasonable
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`interpretations.”
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`Consequently, the Board should not adopt Patent Owner’s argument that Applicant
`
`made any disclaimer imposing a limitation on the claim term “multitude.”
`
`2.
`
`Patent Owner’s Proposal Lacks Written Description Support
`
`As best understood, Patent Owner proposes that “multitude” be interpreted as
`
`“necessarily greater than two” (i.e., as three or more). Response at 16, 17. Even if,
`
`as Patent Owner contends, Applicant intended to disclaim embodiments with only
`
`two thresholds, Patent Owner’s proposed interpretation should be rejected at least
`
`because the Specification of the ’774 Patent lacks written description for an
`
`embodiment with three thresholds.
`
`Where a patent claims a range, “[t]he disclosure of a broad range of values
`
`does not by itself provide written description support for a particular value within
`
`the range.” Gen. Hosp. Corp. v. Sienna Biopharm., Inc., 888 F.3d 1368, 1372 (Fed.
`
`Cir. 2018); see also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326–27
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`(Fed. Cir. 2000) (“[O]ne cannot disclose a forest in the original application, and then
`
`later pick a tree out of the forest and say here is my invention. In order to satisfy the
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`written description requirement, the blaze marks directing the skilled artisan to that
`
`tree must be in the originally filed disclosure.”).
`
`Here, the originally filed disclosure states only that “a multitude of
`
`thresholds” may be employed, with no written description in the Specification
`
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`indicating the metes and bounds of the claim term “multitude.” The Specification
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`(and Patent Owner’s Response) refers only to reference numeral 432 of Figure 4, as
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`shown below:
`
`
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`’774 Patent, FIG. 4; see also id. at 13:58–67 (characterizing active display 432 as
`
`“includ[ing a] multitude of threshold values.”). Patent Owner characterizes this
`
`active display as “including between five and seven” thresholds. Even accepting this
`
`characterization for the sake of argument, FIG. 4 does not provide written
`
`description for an embodiment with three or four thresholds. Patent Owner’s
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`argument is duplicitous—on one hand Patent Owner argues the “multitude” requires
`
`three or more thresholds, yet on the other hand, the ’774 Specification establishes,
`
`at best, only 5–7 thresholds. Patent Owner is attempting to make the claim cover 3–
`
`4 thresholds when even its own Specification does not describe such. The Board
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`should reject Patent Owner’s attempt to use claim construction to import limitations
`
`into the claim to tailor to an undisclosed embodiment.
`
`Finally, and tellingly, Patent Owner does not seek to amend claim 8 in the
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`concurrently filed Motion to Amend (Paper 16) to require “more than two”
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`thresholds, where providing “support in the original disclosure of the patent for each
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`claim that is added or amended” would be required. 37 CFR § 42.121(b)(1).
`
`Nor does extrinsic evidence save Patent Owner’s proposed interpretation. In
`
`its Preliminary Response, Patent Owner cited an online dictionary defining
`
`multitude as “a great number.” POPR at 16 (citing dictionary.com).1 Responsive to
`
`this argument, the Board cited from two dictionaries defining multitude as “1. The
`
`condition of quality of being numerous. 2. A very great number” and a “large
`
`number.” Institution Decision at 11–12 (citing Ex. 3001; Ex. 3002). As the Board
`
`rightly pointed out, all of these definitions are consistent with an interpretation of
`
`“multitude” as synonymous with “plurality” (particularly in light of the parallel
`
`definitions of “plurality” in each dictionary). Id. None of these definitions, however,
`
`is consistent with drawing a line between two and three, or with drawing a line
`
`between two and “between five and seven.” In other words, the ’774 Patent includes
`
`“no blaze marks directing the skilled artisan” to an embodiment with three
`
`
`1 Notably, Patent Owner does not cite the full definition from dictionary.com (cited
`
`in Paper 8, Patent Owner Preliminary Response, at 16). The dictionary.com
`
`definition for multitude also states “the state or character of being many;
`
`numerousness.” (Ex. 1076). This is consistent with interpreting “multitude”
`
`synonymously with “plurality.”
`
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`thresholds, and Patent Owner’s attempt to use claim construction to pick and choose
`
`trees should be rejected. Purdue, 230 F.3d at 1326.
`
`III. THE CLAIMS OF THE ’774 PATENT ARE INVALID AS OBVIOUS
`In the Institution Decision, the Board found that “Petitioner has persuasively
`
`shown that Sakamoto teaches all limitations of claim 1 in light of the knowledge of
`
`a person of ordinary skill in the art” and similarly found that “Petitioner has
`
`established a reasonable likelihood that it would prevail in showing that the subject
`
`matter of claim 8 would have been obvious over Sakamoto.” Institution Decision at
`
`24, 26. Other than its attempt to invoke prosecution history estoppel to limit the
`
`construction of “multitude,” as discussed above, Patent Owner makes no new
`
`arguments and introduces no new evidence in its Response. As set out in the Petition
`
`and elaborated below, Sakamoto teaches all limitations of the Challenged Claims,
`
`which should be found unpatentable as obvious for at least the reasons provided in
`
`the Petition.
`
`A. Limitations 1(e) and 8(c): Sakamoto Teaches Adjusting Cycle Rates
`
`1.
`
`Patent Owner’s Attempt to Read a Schedule into the Claims
`Should Be Rejected
`
`Patent Owner’s first argument relies on its renewed attempt to read into the
`
`claims a requirement for a “schedule for when repeating activities occur.” Response
`
`at 8. As the Board pointed out in the Institution Decision:
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`In particular, claim 1 includes no requirement that the “updated set of
`network communication signaling protocols” must relate to schedules
`of repeating events or the updating of such schedules. “While we read
`claims in view of the specification, of which they are a part, we do not
`read limitations from the embodiments in the specification into the
`claims.” Hill-Rom, 755 F.3d at 1371. Thus, Patent Owner is wrong to
`suggest (see Prelim. Resp. 10–12) that the exemplary embodiments it
`cites from the specification of the ’774 patent limit the recited “local
`battery power adjustment mechanism.”
`
`Institution Decision at 22. Patent Owner makes no new arguments and presents no
`
`new evidence, but instead repeats verbatim the arguments previously rejected. These
`
`arguments should be rejected again for the same reasons they were rejected in the
`
`Institution Decision.
`
`As the Board pointed out there, the evidence put forth by Patent Owner that
`
`the claimed “local battery power adjustment mechanism” limitation of claim 1 “is
`
`directed to updating a schedule of repeating events” relates to “variant[s],”
`
`“example[s],” and “embodiments” of the invention. See, e.g., ’774 Patent, 4:37,
`
`14:1, 14:6, 14:39, 11:63. Indeed, the ’774 Patent explicitly notes that its “description
`
`is in no way meant to be limiting, but rather should be taken as illustrative of the
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`general principles of the invention.” Id. at 15:40–42. As such, the Board should
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`continue to reject Patent Owner’s attempts to use the exemplary embodiments to
`
`limit the claims.
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`2.
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`Patent Owner Fails to Address the Undisputed Evidence that
`Each of Sakamoto’s Positioning Modes Has an Associated
`Regular Update Rate
`
`Even under Patent Owner’s improper importation of limitations into the
`
`claims, Sakamoto still teaches the claimed “local battery power adjustment
`
`mechanism” by virtue of the update rate associated with each positioning mode.
`
`Patent Owner attempts to distinguish over Sakamoto by limiting elements [1(e)] and
`
`[8(e)] to require “updating a schedule of repeating events” and arguing that
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`Sakamoto does not teach a “schedule of repeating events or any updating of such
`
`schedule,” by pointing to an embodiment where the user manually instructs
`
`positioning. Response at 9–10. Patent Owner is not responding to the Petition’s
`
`mapping, which relied on Sakamoto’s automatic positioning performed according to
`
`a cycle.
`
`As an initial matter, Patent Owner asserts the ’774 Patent “clearly discloses
`
`adjusting a rate at which location coordinate packets are either received or
`
`transferred” and that the ’774 Patent refers to the rate as “a refresh rate.” Id. at 8.
`
`Patent Owner thus agrees a refresh rate is a schedule. See ’774 Patent, 12:58–62.
`
`Sakamoto teaches, for each of its modes, a refresh rate, thereby teaching the
`
`“schedule.” For example, the normal sensitivity positioning mode has a regular
`
`refresh rate associated with the “short cycle” tracking. Ex. 1003 (Andrews
`
`Declaration), ¶¶ 91–93. The high sensitivity positioning mode has a regular refresh
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`rate associated with the GPS refresh rate. Id. at ¶ 90. And the stop-position searching
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`mode has a 0 Hz refresh rate. Id. at ¶ 94. As such, Sakamoto teaches a (regular)
`
`refresh rate of the location coordinates associated with each positioning mode, as
`
`summarized in the Petition:
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`
`
`Petition at 34.
`
`a)
`
`Sakamoto’s normal positioning mode has a regular
`refresh rate
`
`Patent Owner interprets Sakamoto’s “normal sensitivity positioning mode” to
`
`update the position only manually in response to user request. Response at 10. This
`
`interpretation both ignores Sakamoto’s teachings of automatic position updates and
`
`fails to address the undisputed evidence that “normal sensitivity positioning mode”
`
`has an associated refresh rate. As Mr. Andrews notes in his original declaration,
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`position searches can be requested by server 2 from Sakamoto’s GPS receiver at an
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`irregular rate specified by the position searcher B or at a regular, real-time “short
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`cycle.” (Ex. 1003, ¶ 91 (citing Sakamoto at ¶ [0040])). Patent Owner further ignores
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`Sakamoto’s teachings that (regardless of mode) the server periodically requests a
`
`signal level update from the GPS device, thereby powering the GPS receiver to listen
`
`for location coordinate packets such that their signal level can be measured. See id.
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`at ¶ 92 (citing Sakamoto at ¶ [0037]); see also Petition at 33 (making both of these
`
`arguments). Thus, Sakamoto teaches that the GPS receiver in normal sensitivity
`
`positioning mode has an associated refresh rate.
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`b)
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`Sakamoto’s high sensitivity positioning mode has a
`regular refresh rate
`
`Patent Owner recognizes Sakamoto’s “high sensitivity positioning mode”
`
`update the position “continuous[ly]” (Response at 10) but fails to address the
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`undisputed evidence that “continuous” operation has an associated refresh rate.
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`Andrews Declaration, ¶ 90 (giving typical refresh rates for GPS receivers of 1 Hz,
`
`10Hz, or 0.1 Hz); see also Petition at 31–32. Therefore, Sakamoto’s teaching of a
`
`continuous operation in the high sensitivity mode, and Mr. Andrews’s unrebutted
`
`opinion that continuous operation has an associated refresh rate, show that
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`Sakamoto’s high sensitivity positioning mode also has an associated regular refresh
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`rate.
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`c)
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`Sakamoto’s stop-position searching mode has a
`regular refresh rate
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`Patent Owner’s interpretation of Sakamoto’s teachings of power-off mode
`
`ignores the undisputed evidence that, in power-off mode, Sakamoto’s system has a
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`refresh rate of 0Hz. Andrews Declaration, ¶ 94, 98.
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`d)
`
`Patent Owner does not dispute that switching the
`positioning mode updates the communication signaling
`protocol
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`Finally, it is undisputed that a POSITA would have appreciated that switching
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`the positioning mode updates the communication signaling protocol. Petition at 31
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`(citing Andrews Declaration at ¶ 89). As argued in the Petition and summarized
`
`above, each position mode has a different GPS refresh rate (the claimed “listen
`
`rate”). Hence, when Sakamoto updates the positioning mode responsive to the
`
`battery charge level, the communication signaling protocol and therefore the listen
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`rate is also adjusted, as required by the claims. Accordingly, Patent Owner’s
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`arguments that Sakamoto fails to teach claims limitations 1(e) and 8(c) fail even if
`
`the claims are interpreted to require updating a recurring schedule of events.
`
`B.
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`Limitation 8(d): Sakamoto teaches a “multitude” of thresholds
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`1.
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`Sakamoto Teaches at Least Four Threshold Values
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`Patent Owner argues, based on its proposed interpretation of “multitude,” that
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`Sakamoto fails to teach that “the battery power level monitor … adjusts a power level
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`applied to location tracking circuitry responsive to one or more signal levels, the power
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`level comprising a multitude of threshold values,” because Patent Owner reads Sakamoto
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`as teaching only two thresholds. Response at 12–13. However, as discussed below
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`Sakamoto in fact teaches at least four distinct threshold values for changing the
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`power level applied to the location tracking circuitry, thereby satisfying even Patent
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`Owner’s proposed interpretation.
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`First, as argued in the Petition, “Sakamoto discloses that the remaining battery
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`amount (power level of the charging unit) has two thresholds against which it is
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`compared to determine the positioning mode.” Petition at 50; see also 51–54
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`(describing these two thresholds). Patent Owner does not dispute that Sakamoto
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`teaches these two thresholds or that they otherwise satisfy the requirements of the
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`claim limitation; Patent Owner only asserts that these two thresholds are insufficient
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`to be a “multitude.” Response at 17 (“Sakamoto’s two thresholds are not a
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`multitude.”). However, Sakamoto teaches additional thresholds beyond these two,
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`namely thresholds associated with a GPS signal level. As Claim 8(d) merely recites
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`adjusting the power level responsive to “one or more signal levels” without reference
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`to a particular type of signal level, Sakamoto’s teaching of multiple threshold values
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`for each of a battery power level and a GPS signal level satisfies the Claim 8(d).
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`In particular, Sakamoto teaches that the power level applied to the GPS receiver
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`can be increased (to set the GPS receiver to high sensitivity positioning mode) when the
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`GPS signal level is below a predetermined threshold K1, or decreased (to set the GPS
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`receiver to normal sensitivity mode) when GPS signal level exceeds “a threshold value
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`K2 different from the threshold value K1.” Andrews Declaration at ¶ 58 (quoting
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`Sakamoto at ¶ [0027]). This is also consistent with Mr. Andrews’s deposition testimony
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`discussing how Sakamoto teaches transitioning between positioning modes based on the
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`GPS signal level. Ex. 2003 (Andrews Deposition), 30:16–31:13; 39:7–41:5. Still further,
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`this is consistent with the disclosure of the ’774 Patent, which discusses both satellite
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`signal levels and battery charge levels as having associated thresholds used for adjusting
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`the cycle timing. ’774 Patent 7:56–59 (thresholds for satellite signal level); 13:60–62
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`(battery power level threshold values). As such, the evidence is undisputed that Sakamoto
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`teaches at least two battery level thresholds, and at least two GPS signal level thresholds
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`for a total of four thresholds, all of which are used to transition positioning mode and
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`therefore adjust the cycle timing.
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`These GPS signal level thresholds are used as the basis to “intermittently activate
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`or deactivate the location tracking circuitry” for the same reasons discussed in the Petition
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`with respect to the battery level thresholds at least because Sakamoto uses the same
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`modes with both sets of thresholds. For example, Sakamoto may transition into normal
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`mode either in response to a strong GPS signal (see, e.g., Sakamoto at ¶ 0027) or in
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`response to a low battery level (see, e.g., id. at ¶¶ [0028]–[0029]).
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`Like the battery level thresholds, the purpose of the signal level thresholds is “to
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`conserve power of the charging unit.” Andrews Declaration at ¶ 58. Furthermore, Mr.
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`Andrews opines “the various thresholds (including the signal thresholds K1 and K2 and
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`the first battery threshold) are configurable by the user using the man-machine interface.”
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`Id. at ¶ 104. As such, the at least two GPS signal level thresholds also satisfy the claim
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`requirement that they be “determined by a user or system administrator.” Thus, all four
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`thresholds collectively act to set the operating mode, and do so based at least in part “in
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`response to the estimated charge level of the charging unit.”
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`In summary, Sakamoto teaches adjusting a power level applied to location tracking
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`circuitry responsive to one or more (here, two) signal levels, the power level comprising
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`a multitude (here, four) of threshold values determined by a user or system administrator
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`to intermittently activate or deactivate the location tracking circuitry to conserve power
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`of the charging unit in response to the estimated charge level of the charging unit.
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`Accordingly, Patent Owner’s argument that Sakamoto fails to teach a “multitude” of
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`thresholds fails even under their proposed interpretation of the claim term “multitude.”
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`2.
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`Petitioner’s Argument Applying Sakamoto’s Additional
`Thresholds Properly Responds to Patent Owner’s New Claim
`Construction
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`While “[i]t is of the utmost importance that petitioners in the IPR proceedings
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`adhere to the requirement that the initial petition identify ‘with particularity’ the
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`‘evidence that supports the grounds for the challenge to each claim’” (Intelligent
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`Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
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`(citing 35 U.S.C. § 312(a)(3))), arguments presented in a Reply that do not cite any
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`new evidence or previously unidentified portions of a prior art reference will not
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`generally be an impermissible new theory of unpatentability. Apple Inc. v. Andrea
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`Electronics Corp., 949 F.3d 697, 706 (Fed. Cir. 2020). Furthermore, “any ambiguity
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`as to whether [Petitioner] raised a new argument on reply is eliminated when we
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`consider whether [Petitioner’s] reply arguments are responsive to arguments raised
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`in [Patent Owner’s] Response.” Id.
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`Here, this Reply responds at the first opportunity to unforeseeable claim
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`interpretation arguments advanced by the Patent Owner in its Preliminary Response
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`and Patent Owner Response and cites only evidence previously identified by Mr.
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`Andrews and discussed in Patent Owner’s deposition of Mr. Andrews. As such,
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`Petitioner respectfully submits that discussing Sakamoto’s further thresholds is not
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`an impermissible new argument or new grounds of patentability.
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`IV. CONCLUSION
`For all of the reasons articulated in the Petition and herein, Petitioner
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`respectfully requests the Board find all Challenged Claims unpatentable.
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /s/Jennifer C. Bailey
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`Jennifer C. Bailey Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`Robin A. Snader, Reg. No 66,085
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`7015 College Blvd., Suite 700
`Overlan
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