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 REPLY BRIEF
`
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`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 REPLY BRIEF
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 2
`III. CONCLUSION ................................................................................................ 6
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`
`
`i
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`PATENT OWNER’S EXHIBIT LIST
`Exhibit Numer 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)
`U.S. Patent Appl. No. 13/356,614
`U.S. Patent Appl. No. 11/969,905
`U.S. Patent Appl. No. 13/356,699
`U.S. Patent Appl. No. 12/419,451
`U.S. Patent Appl. No. 13/356,643
`File history of U.S. Patent Number 8,497,774
`
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`ii
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`I.
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`INTRODUCTION
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`As discussed in Patent Owner’s Opening Brief, the language of Claim 8 from
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`U.S. Patent No. 8,497,774 (“the ’774 Patent”) clearly shows that the term “a
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`multitude of threshold values” is limited to battery power level threshold values and
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`does not include GPS signal strength values. Specifically, Claim 8 recites:
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`wherein the battery power level monitor measures a power level of the
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`charging unit and adjusts a power level applied to location tracking
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`circuitry responsive to one or more signal levels, the power level
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`comprising a multitude of threshold values determined by a user or
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`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
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`the estimated charge level of the charging unit.
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`EX1001, 16:43-61 (emphasis added). That claim language shows that “the power
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`level comprising a multitude of threshold values” refers back to the “power level of
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`the charging unit” and the “power level applied to location tracking circuitry,” and
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`thus decides the question.
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`Petitioner’s opening brief, however, ignores that clear claim language.
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`Instead, it relies on a single embodiment disclosed in the ’774 Patent that is separate
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`and distinct from the embodiment covered by Claim 8’s “multitude of threshold
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`levels” and thus cannot support Petitioner’s argument. See Paper 45, 1-6.
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`1
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`Even if the Board focused solely on the embodiments disclosed in the
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`specification, the claimed “power level comprising a multitude of threshold values”
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`is limited to battery power level values. The ’774 Patent discloses two distinct and
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`complimentary embodiments that are each separately encompassed in Claim 8.
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`Petitioner correctly observed that the Federal Circuit has repeatedly admonished
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`against a claim construction that would read out a specific embodiment disclosed in
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`the specification by noting that “a claim construction excluding a preferred
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`embodiment is rarely, if ever correct.” Sequoia Tech, LLC v. Dell, Inc., 66 F.4th
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`1317, 1327 (Fed. Cir. 2023) (citing Kaufman v. Microsoft., 34 F.4th 1360, 1372 (Fed.
`
`Cir. 2022)). However, Petitioner’s proposed construction would, in clear error,
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`exclude the second embodiment. The proper construction of the term “a multitude
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`of threshold values” recited in Claim 8 is limited to battery power level threshold
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`values in accordance with the preferred embodiment shown in FIG. 4 and disclosed
`
`in the corresponding portion of the specification. See EX1001, 11:1-14:57.
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`II. ARGUMENT
`As discussed above, the claim language alone shows that Claim 8’s recitation
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`of “the power level comprising a multitude of threshold values” refers back to “a
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`power level of the charging unit” and “a power level applied to the location tracking
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`circuitry” and is thus limited to battery power level threshold values. That
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`conclusion is supported by the embodiments disclosed in the specification.
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`2
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`U.S. Patent No. 8,497,774
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`Petitioner mischaracterizes the first embodiment shown in FIG. 3 as
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`“includ[ing] GPS signal level as part of the multitude of threshold values.” Paper
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`45, at 1 (emphasis added). Yet, the quoted portion of the ’774 Patent discloses only
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`a single GPS signal level. EX1001, 7:55-59 (“detecting a first signal level, e.g., a
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`low signal level or threshold value”) (emphases added). Even when the single GPS
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`signal level is referred to as a threshold value, it is a singular value.
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`More importantly, the embodiment of FIG. 3 upon which Petitioner relies
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`relates to a different portion of the relevant limitation, specifically, “adjusts a power
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`level applied to location tracking circuitry responsive to one or more signal levels.”
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`EX1001, 16:54-56. Of note, this portion was, as originally filed, recited in a distinct
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`dependent claim (claim 16). EX2019, at 372.
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`While Petitioner notes that “[u]tilizing only battery levels as the multitude of
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`threshold values simply would not work with the embodiment of Figure 3,” Paper
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`45, at 5, “the power level comprising a multitude of threshold values” has nothing
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`to do with the embodiment of FIG. 3. Instead, “the power level comprising a
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`multitude of threshold values” corresponds to the embodiment of FIG. 4.
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`Petitioner further identifies the ’774 Patent as “only us[ing] the phrase
`
`‘threshold value’ two times.” Id., at 6. Petitioner continues “[o]ne use of ‘threshold
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`value’ appears in column 13 in a description of Figure 4.” Id. Of note, however, is
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`that this distinct and complementary embodiment is the only disclosure that
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`3
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`explicitly uses the phrase “multitude of threshold values.” EX1001, 13:58-62 (“the
`
`present invention has the capability of power level (e.g., battery power level 406)
`
`adjustments include multitude of threshold values.”).
`
`Petitioner’s subsequent admission is both significant and dispositive – “[h]ere,
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`the patentee is equating the battery power levels with the multitude of threshold
`
`values–a point that is not in dispute between the parties.” Paper 45, at 6-7. Petitioner
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`admits, and acknowledges no dispute, that the multitude of threshold values
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`disclosed in conjunction with the embodiment of FIG. 4 only refer to battery power
`
`levels. Since “the power level comprising a multitude of threshold values”
`
`corresponds to the embodiment of FIG. 4, there is no dispute that a proper
`
`construction of “a multitude of threshold values” is limited to battery power level
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`threshold values.
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`As Patent Owner stated in it’s Opening Brief on Remand “[a]s originally filed,
`
`the ‘multitude of threshold values’ limitation was recited in former dependent claim
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`17.” Paper 44, at 3 (citing EX2019, at 372). Patent Owner further stated “[a]s clearly
`
`disclosed, the recited ‘multitude of threshold values’ corresponds to value 419,
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`which is explicitly disclosed as defining a battery power level threshold that can be
`
`adjusted to a multitude of values.” Id., at 4 (citing EX1001, FIG. 4; 11:44-63 and
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`13:58-67). To construe “multitude of threshold values” as suggested by Petitioner
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`would erroneously read the preferred embodiment of FIG. 4 out of the claim.
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`4
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`To be clear, Petitioner attempts to improperly conflate the distinct
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`embodiments of FIGs. 3 and 4 of the ’774 Patent to suggest that GPS signal levels,
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`as disclosed in reference to FIG. 3, may somehow be included in the multitude of
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`power level threshold values, as disclosed in reference to FIG. 4. That the ’774
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`Patent discloses a single GPS signal level threshold does not overcome the clear
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`disclosure of two distinct types of threshold values (i.e., a GPS signal level threshold
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`value and a multitude of power level threshold values), the clear disclosure of two
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`distinct embodiments (i.e., FIGs. 3 and 4), and the recitation, as originally filed, of
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`each embodiment in a distinct dependent claim (i.e., original claim 16 corresponding
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`to the embodiment of FIG. 3 and original claim 17 corresponding to the embodiment
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`of FIG. 4). Patent Owner identified this attempt not only as improper, but also as
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`new and untimely, in Patent Owner’s Sur-Reply as well as in Patent Owner’s
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`Opening Brief on Remand. See Paper 31, at 13-14 and Paper 44, at 5.
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`As recited, “the battery power level monitor … adjusts a power level applied
`
`to location tracking circuitry responsive to one or more signal levels” encompasses
`
`the embodiment of FIG. 3, including any reference to a GPS signal level threshold.
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`As separately recited, “the power level comprising a multitude of threshold values
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`determined by a user or system administrator to intermittently activate or deactivate
`
`the location tracking circuitry…” distinctly encompasses the embodiment of FIG. 4,
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`including any reference to battery power level threshold values. Petitioner agrees
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`5
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`U.S. Patent No. 8,497,774
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`that the embodiment of FIG. 4 “equat[es] the battery power levels with the multitude
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`of threshold values.” Paper 45, at 7. As such, the only proper construction, as agreed
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`by Petitioner, is that the “threshold values” in the recited “a multitude of threshold
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`values” are limited to battery power level threshold values
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`III. CONCLUSION
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`For the reasons set forth above, the proper construction of “multitude of
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`threshold values” is such that the recited “threshold values” are limited to battery
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`power level threshold values and claims 8, 10, 13, and 15 of the ’774 Patent are not
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`unpatentable.
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`Dated: September 20, 2023
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`
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`Respectfully submitted,
`
`TAFT STETTINIUS & HOLLISTER LLP
`
` /Shaun D. Gregory/
`Shaun D. Gregory, Reg. No. 68,498
`200 Massachusetts Avenue N.W., Suite 500
`Washington, DC 20001
`Counsel for Patent Owner
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`6
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing PATENT
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`OWNER’S OPENING BRIEF is six pages, excluding the parts of the petition
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`exempted by 37 C.F.R. § 42.24(a), as measured by the word-processing system used
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`Respectfully submitted,
`TAFT STETTINIUS & HOLLISTER LLP
` /Shaun D. Gregory/
`Shaun D. Gregory, Reg. No. 68,498
`200 Massachusetts Avenue N.W., Suite 500
`Washington, DC 20001
`Counsel for Patent Owner
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`to prepare this paper.
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`
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`Dated: September 20, 2023
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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)
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`the foregoing PATENT OWNER’S REPLY BRIEF is being served electronically
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`via e-mail on September 20, 2023, in its entirety on the following counsel of record
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`for Petitioners:
`
`Jennifer C. Bailey (Lead Counsel)
`USPTO Reg. No. 52,583
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
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`
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`Dated: September 20, 2023
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`
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`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
`
`Respectfully submitted,
`
`TAFT STETTINIUS & HOLLISTER LLP
`
` /Shaun D. Gregory/
`Shaun D. Gregory, Reg. No. 68,498
`200 Massachusetts Avenue N.W., Suite 500
`Washington, DC 20001
`Counsel for Patent Owner
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