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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`LBT IP I LLC,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`
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`
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`PETITIONER APPLE INC.’S REPLY REMAND BRIEF
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`I.
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`Introduction
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`The specification of the ’774 Patent describes two different embodiments that
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`rely on two different “threshold values.” LBT’s entire brief focuses on the battery
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`level embodiment, which is described at columns 11-13 (and which includes Figure
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`4). Intentionally or otherwise, LBT completely ignores the GPS signal level
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`embodiment described in columns 7-10. Ultimately, LBT’s argument does nothing
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`to answer the Board’s question because the operation of the battery level
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`embodiment is not in dispute between the parties. Instead, the dispute revolves
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`around what to do with the GPS signal level embodiment disclosed in the portions
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`of the specification that LBT ignores. The dispute is simply whether that
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`embodiment is part of the claims or not. As discussed in the opening brief and below,
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`the GPS signal level embodiment is absolutely part of the “multitude of threshold
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`values” in claim 8. There is no limitation in the claims, or in the specification, that
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`would compel a conclusion that excludes the GPS signal level embodiment.
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`Moreover, LBT’s position runs the risk of violating fundamental legal principles of
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`claim construction that may lead to further appellate issues. Because nothing in
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`claim 8 limits its application to only the battery level embodiment, and because the
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`language of claim 8 uses the broad and expansive “comprising” language, the Board
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`must find that the “multitude of threshold values” includes both battery level and
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`GPS signal level.
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`1
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`II. Argument
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`First, LBT’s argument divorces GPS signal levels from the “power level that
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`is monitored and adjusted by the battery power level monitor.” Id. LBT advances
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`the argument that “in context, the ‘multitude of threshold values’ can only be battery
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`power level threshold values.” Id., 2-3. But this fundamentally ignores the operation
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`of GPS receivers and the impact of a GPS signal level on the power level of the
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`battery. Indeed, the inventors of the ’774 Patent realized that GPS signal levels are
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`intimately tied together with a high drain on the power level of the battery:
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`GPS satellite communication signals may be obstructed or partially
`blocked, hindering tracking and monitoring capability. Not only is a
`GPS transceiver receiving a weak GPS signal [e.g., a weak GPS signal
`level], but also the GPS transceiver is depleting battery power in failed
`attempts to acquire communication signals…
`’774 Patent, 3:2-8. Tellingly, LBT does not cite or discuss this portion of the
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`specification in its brief.
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`Second, LBT ignores the express embodiment that correlates GPS signal
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`levels with the threshold value. LBT instead focuses solely on the Fig. 4 battery level
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`embodiment. LBT provides pages and pages of argument and citations that solely
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`discuss the battery level embodiment. But this discussion is unhelpful because it
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`ignores the fact that the ’774 Patent discloses two embodiments that (allegedly) save
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`power of the tracking device. The first is disclosed in column 7 where the inventors
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`2
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`note that the “designated [GPS] antennas, e.g., antennas 122a, 122b, detect[] a first
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`signal level, e.g., a low signal level or threshold value.”1 ’774 Patent, 7:55-59.
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`Here, the inventors expressly and explicitly equate the GPS signal levels from the
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`GPS antennas 122a/b with a “threshold value.” This portion of the specification
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`completely refutes LBT’s arguments, which is likely why LBT ignored it. Because
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`this embodiment was discussed extensively in Apple’s opening brief2 it will not be
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`addressed further here except to note that it would be error to adopt a construction
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`that reads out an embodiment of the specification. See, e.g., Pacing Techs., LLC v.
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`Garmin Int'l, Inc., 778 F.3d 1021, 1026 (Fed. Cir. 2015).
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`The third problem with LBT’s argument is that it ignores the claim language
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`itself. Limitation 8d reads as follows:
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`wherein the battery power level monitor measures a power level of the
`charging unit and adjusts a power level applied to location tracking
`circuitry responsive one or more signal levels, the power level
`comprising a multitude of threshold values determined by a user or
`system administrator to intermittently activate or deactivate the location
`tracking circuitry to conserve power of the charging unit in response to
`the estimated charge level of the charging unit.
`
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`1 As noted in Apple’s opening brief, antennas 122a/b are the GPS antennas and, thus,
`can only be detecting a GPS signal level, not a battery level. Paper 43, Apple’s Claim
`Construction Brief, 1, 3-4.
`2 Paper 43, Apple’s Claim Construction Brief.
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`3
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`’774 Patent, Claim 8(d). As discussed above, and in Apple’s opening brief, there are
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`two specific embodiments disclosed in the ’774 Patent for the threshold values—one
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`for the GPS signal level and one for the battery level. Paper 43, 6-7 (noting that
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`“threshold value” is only used twice in the ’774 Patent, once for battery power level
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`and once for GPS signal level). It would be reversible error to exclude one of these
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`embodiments unless the claim language expressly limits it to one of these
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`embodiments. Pacing Techs. 778 F.3d at 1026. Nothing in the claim limits it to the
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`battery level embodiment.
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`While LBT focuses its argument on the three words “the power level,” it
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`ignores the term “comprising.” As the Board is well aware, “‘[c]omprising’ is a term
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`of art used in claim language which means that the named elements are essential, but
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`other elements may be added and still form a construct within the scope of the
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`claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997). Because
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`of the term “comprising,” LBT invites error by suggesting “the ‘multitude of
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`threshold values’ can only be battery power level threshold values” because this
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`conclusion violates black letter law on claim construction. In essence, LBT’s
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`argument would replace the phrase “comprising” with “consisting,” which is
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`improper in the absence of any evidence overriding the presumption that exists with
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`the use of the phrase “comprising.” Crystal Semiconductor Corp. v. TriTech
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`Microelectronics Intl’l, Inc., 246 F.3D 1336, 1362 (Fed. Cir. 2001) (“When a patent
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`
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`4
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`
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`claim uses the word “comprising” as its transitional phrase, the use of “comprising”
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`creates a presumption that the body of the claim is open.”) LBT has done nothing to
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`show that this presumption should be overcome to otherwise limit or narrow the
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`normal use of the phrase “comprising.” Thus, the “multitude of threshold values”
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`may include the power level of a battery but the claim is not limited to only those
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`power levels given its use of the term “comprising.” Here, because the specification
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`specifically describes GPS signal levels as another “threshold value,” the use of the
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`phrase “comprising” compels a conclusion that the “threshold values” in claim 8 are
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`not limited to only battery levels.
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`
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`Finally, the claim language itself dictates a conclusion that “threshold values”
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`include both embodiments described in the specification. Limitation 8(d) discusses
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`a “power level monitor” that measures the power of a battery (e.g., the charging
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`unit). The device of claim 8 then adjusts the power level that is applied to the GPS
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`(e.g., the “location tracking circuitry”) in response to one or more signal levels. The
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`claim then recites the power level includes, but is not limited to, a multitude of
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`threshold values that are used to intermittently activate or deactivate the GPS
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`circuitry to conserve power. Based on the broad, plain language used in claim 8, the
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`claim is describing not only the battery level embodiment columns 11-13, as relied
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`upon by LBT, but also the precise GPS signal embodiment from column 7 through
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`column 10.
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`5
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`In the GPS signal embodiment, the “antennas 122a, 122b, detect[] a first
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`signal level, e.g., a low signal level or threshold value.” ’774 Patent, 7:55-58. In that
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`instance, the power level monitor would detect that threshold value (e.g., the low
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`signal level). The ’774 Patent states “electrical circuitry associated with GPS signal
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`acquisition …. may be, for instance, placed on standby or in a sleep mode,”which is
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`the “deactivat[ing] the location tracking circuity to conserve power” described in
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`limitation 8(d). Compare ‘774 Patent, 7:60-62 with Claim 8. Another variant of this
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`same embodiment is described at column 9 where “when GPS signaling is not
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`practicable” (e.g., you have a threshold value that indicates a low GPS signal level),
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`and “the transceiver circuitry (e.g., transceiver 102, location tracking circuitry 114,
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`and signal processing circuitry 104) consumes reduced power for GPS circuitry
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`while the electronic tracking device communicates displacement vectors” through
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`use of the accelerometer. ’774 Patent, 9:5-17. Again, the ’774 Patent’s disclosures
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`match the claim language from claim 8(d) perfectly where it describes a power level
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`that includes, but is not limited to, a scenario where GPS signal levels are low and
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`GPS circuitry is deactivated to conserve power. And, in yet another variation of this
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`embodiment, the ’774 Patent describes “receiv[ing] communication signal of
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`sufficient signal strength,” e.g., a threshold value showing strong GPS signal levels,
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`at which point “location tracking circuitry 114 are activated” while the
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`accelerometer circuitry is deactivated (which will conserve battery power by turning
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`6
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`of unnecessary and duplicative hardware components). ’774 Patent, 10:58-67. This
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`variation of the GPS signal level embodiment encompasses the portion of claim 8(d)
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`that “intermittently activate[s] … the location tracking circuitry to conserve power.”
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`Id., Claim 8(d).
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`
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`Because there is no language in the claim that would otherwise exclude, or
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`read out, the GPS signal level embodiment, it would be error to exclude GPS signal
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`levels from the threshold value. Thus, the Board should construe “multitude of
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`threshold values” to include both GPS signal levels and battery levels.
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`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`adam.seitz@eriseip.com
`ERISE IP, P.A.
`7015 College Blvd, Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Telephone
`(913) 777-5601 Facsimile
`
`COUNSEL FOR PETITIONER
`APPLE INC.
`
`
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`Dated: September 20, 2023
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`7
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`Inter Partes Review No. IPR2020-01189
`U.S. Patent No. 8,497,774
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
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`September 20, 2023, a complete and entire copy of Petitioner Apple Inc.’s Reply
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`Remand Brief was served via electronic filing with the Board and via Electronic Mail
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`on the following practitioners of record for Patent Owner:
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`Shaun D. Gregory (sgregory@taftlaw.com)
`Brian S. Seal (bseal@taftlaw.com)
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`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`adam.seitz@eriseip.com
`ERISE IP, P.A.
`7015 College Blvd, Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Telephone
`(913) 777-5601 Facsimile
`
`COUNSEL FOR PETITIONER
`APPLE INC.
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`8
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