Trials@uspto.gov
`571-272-7822
`
`
`Paper 28
`Date: September 24, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`LBT IP I LLC,
`Patent Owner.
`____________
`
`IPR2020-01189
`Patent 8,497,774 B2
`____________
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`I. INTRODUCTION
`On March 4, 2021, we instituted trial as to claims 1, 4–6, 8, 10, 13, and 15 of
`U.S. Patent No. 8,497,774 B2. Paper 9 (“Decision”). After institution, Patent
`Owner filed a Motion to Amend in which it proposes substitute claims 20–34 to
`replace original claims 1–15. Paper 16 (“Motion” or “Mot.”). Specifically, “[t]o
`the extent the Board finds any original claim unpatentable in this proceeding,
`Patent Owner respectfully requests that the Board grant this motion to amend with
`respect to each corresponding proposed substitute claim presented herein.” Mot. 2.
`Petitioner filed an Opposition to the Motion. Paper 26 (“Opposition” or “Opp.”).
`In the Motion, Patent Owner requested that we provide preliminary guidance
`concerning the Motion in accordance with the Board’s pilot program concerning
`motion to amend practice and procedures. Mot. 2; see also Notice Regarding a
`New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial
`Proceedings under the America Invents Act before the Patent Trial and Appeal
`Board, 84 Fed. Reg. 9,497 (Mar. 15, 2019) (providing a patent owner with the
`option to receive preliminary guidance from the Board on its motion to amend)
`(“Notice”). We have considered Patent Owner’s Motion and Petitioner’s
`Opposition.
`In this Preliminary Guidance, we provide information indicating our initial,
`preliminary, non-binding views on whether Patent Owner has shown a reasonable
`likelihood that it has satisfied the statutory and regulatory requirements associated
`with filing a motion to amend in an inter partes review and whether Petitioner (or
`the record) establishes a reasonable likelihood that the proposed substitute claims
`are unpatentable. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121; Lectrosonics, Inc. v
`Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB February 25, 2019) (precedential);
`see also Notice, 84 Fed. Reg. at 9,497 (“The preliminary guidance . . . provides
`
`
`
`2
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`preliminary, non-binding guidance from the Board to the parties about the [motion
`to amend].”); Rules of Practice to Allocate the Burden of Persuasion on Motions to
`Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 85 Fed.
`Reg. 82,923 (Dec. 21, 2020).
`For purposes of this Preliminary Guidance, we focus on the proposed
`substitute claims, and specifically on the amendments proposed in the Motion. See
`Notice, 84 Fed. Reg. at 9,497. We do not address the patentability of the
`originally challenged claims. Id. Moreover, in formulating our preliminary views
`on the Motion and Opposition, we have not considered the parties’ other
`substantive papers on the underlying merits of Petitioner’s challenges. We
`emphasize that the views expressed in this Preliminary Guidance are subject to
`change upon consideration of the complete record, including any revision to the
`Motion filed by Patent Owner. Thus, this Preliminary Guidance is not binding on
`the Board when rendering a final written decision. See id. at 9,500.
`II. PRELIMINARY GUIDANCE
`As a threshold matter, Patent Owner proposes substitute claims 20–34 to
`replace original claims 1–15, but claims 1, 4–6, 8, 10, 13, and 15 are the only
`challenged claims in this proceeding. Section 316(d) states that a patent owner
`may file one motion to “[c]ancel any challenged claim” or “[f]or each challenged
`claim, propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)
`(emphases added). Accordingly, Section 316(d) does not permit Patent Owner to
`cancel or propose substitutes for non-challenged claims. See also Apple Inc. v.
`Uniloc 2017 LLC, IPR2018-01092, Paper 25 at 45 (Dec. 13, 2019) (holding the
`same). Thus, we only consider the Motion with respect to the proposed substitute
`claims that correspond to the challenged claims (i.e., proposed substitute claims 20,
`
`
`
`3
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`23–25, 27, 29, 32, and 34, which correspond to original claims 1, 4–6, 8, 10, 13,
`and 15).
`A. Statutory and Regulatory Requirements
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record, it appears that Patent Owner has shown a reasonable
`likelihood that it has satisfied the statutory and regulatory requirements associated
`with filing a motion to amend.
`1. Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute claims?
`(35 U.S.C. § 316(d)(1)(B))
`Yes. As discussed above, we are only considering proposed substitute
`claims 20, 23–25, 27, 29, 32, and 34. Each of these proposed substitute
`claims corresponds to one of the challenged claims. See Mot. 4.
`Petitioner does not argue otherwise. See generally Opp. Thus, Patent
`Owner proposes a reasonable number of substitute claims.
`
`2. Respond to Ground of Unpatentability
`Does the Motion respond to a ground of unpatentability involved in the
`trial? (37 C.F.R. § 42.121(a)(2)(i))
`Yes. Patent Owner responds to at least one ground of unpatentability from
`the Decision. Mot. 3–4. Petitioner does not argue otherwise. See
`generally Opp. Thus, the Motion responds to a ground of unpatentability.
`
`3. Scope of Amended Claims
`Does the amendment seek to enlarge the scope of the claims? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. Proposed substitute claims 20, 23–25, 27, 29, 32, and 34 retain all the
`features of the corresponding original claims while only adding further
`limitations. Mot. 2–3. Thus, the amendment does not seek to enlarge the
`scope of the claims.
`
`
`
`4
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`Petitioner contends that proposed substitute claims 20, 23–25, 27, 29, 32,
`and 34 impermissibly attempt to broaden the scope of corresponding
`original claims 1, 4–6, 8, 10, 13, and 15. Opp. 3. Specifically, Petitioner
`contends that proposed substitute claims 20 and 27 require “an updated set
`of network communication signaling protocols associated with at least one
`of a request rate representing a repeating time interval for 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,” where corresponding original
`claims 1 and 8 require that the request rate and listen rate actually be for
`the corresponding packets. Id. (citing Mot. 25–26). According to
`Petitioner, a system where a refresh rate merely “represent[s]” (but does
`not include) an actual transmission or reception rate for a corresponding
`type of packet would satisfy proposed substitute claims 20 and 27, but
`would not satisfy corresponding original claims 1 and 8. Id. at 3–4.
`Proposed substitute claims 20 and 27 require that the recited “request rate”
`and “listen rate” represent “a repeating timing interval.” Corresponding
`original claims 1 and 8 do not recite such a requirement, so these proposed
`amendments appear to represent a narrowing of the claims. At this stage
`of the proceeding, we also do not agree with Petitioner’s argument that the
`use of word “representing” in the proposed amendments works to broaden
`the proposed substitute claims. Petitioner’s argument is premised on the
`notion that the word “of” in the challenged claims means “includes.” See
`Opp. 3–4. But Petitioner does not support its argument with any record
`evidence, and we are not persuaded at this juncture that the word
`“representing” meaningfully changes the scope of the proposed substitute
`claims compared to the word “of” in the original claims. Petitioner’s
`argument also does not account for the significant narrowing of claim
`scope caused by the added “repeating time interval” limitations. Thus, the
`scope of proposed substitute claims 20 and 27 does not appear exceed the
`scope of the original claims.
`Thus, at this stage of the proceeding, on the record before us, Patent
`Owner has shown a reasonable likelihood that the amendment regarding
`proposed substitute claims 20, 23–25, 27, 29, 32, and 34 does not seek to
`enlarge the scope of the original claims.
`
`
`
`5
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`4. New Matter
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. On this record, Patent Owner appears to have identified adequate
`written description support for proposed substitute claims 20, 23–25, 27,
`29, 32, and 34. Mot. 4–16.
`The ’774 patent issued from Application Ser. No. 12/419,451 (“the ’451
`application”), which is a continuation-in-part of Application Ser. No.
`11/969,905 (“the ’905 application) and five other applications. Ex. 1001,
`codes (21), (63); see also Mot. 4. To show support for the proposed
`substitute claims, Patent Owner cites the published version of the ’451
`application—U.S. Pub. No. 2009/0189807 A1 (“the ’807 publication”)—
`rather than the ’415 application itself. See Mot. 4–16 (citing Ex. 2013);
`Ex. 2013 (the ’807 publication). However, Patent Owner was required to
`cite the ’415 application. See Lectrosonics, IPR2018-01129, Paper 15 at 7
`(requiring that a motion to amend set forth written description support in
`the originally filed disclosure of the subject patent). Here, the ’807
`publication appears to be substantially identical to the ’451 application,
`and Petitioner does not identify any differences. As a result, and to
`provide further guidance to the parties, we address Patent Owner’s
`citations as if Patent Owner had cited to the ’415 application. In the event
`that Patent Owner files either a reply to Petitioner’s Opposition or a
`revised motion, we advise Patent Owner to cite the ’451 application, in
`accordance with Lectrosonics. Moreover, because Patent Owner does not
`cite the ancestral ’905 application, the earliest priority date of the proposed
`substitute claims is the filing date of the ’451 application (i.e., April 7,
`2009).
`Petitioner contends that Patent Owner has not shown that the ’451
`application adequately supports “a request rate representing a repeating
`time interval for location coordination 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,” as recited in proposed substitute claim 20 and similarly recited in
`proposed substitute claim 27. Opp. 5. Specifically, Petitioner argues that
`neither the word “represent” nor any variation thereof appears in the ’451
`application. Id. Petitioner also argues that there is no disclosure in the
`’451 application of any “time interval” that repeats, and the word
`6
`
`
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`“repeating” only appears in the Specification in the context of a repeatedly
`tapping Morse code to generate a distress signal. Id. (citing Ex. 1001,
`9:58–62). Petitioner additionally argues that 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 ’451 application.
`Id. Petitioner further argues that the paragraphs cited by Patent Owner in
`its Motion (i.e., paragraphs 53, 64, 65, and 66 of the ’451 application)
`merely describe that a communication protocol has an associated request
`rate or listen rate that may be specified by a frequency or an interval, and
`do not provide adequate written description support for a rate
`“representing a repeating time interval.” Id. at 5–6.
`At this stage of the proceeding, we do not agree with Petitioner’s
`arguments. Paragraph 53 of the ’451 application discloses “request
`rate 420 of location coordinate packets 422 by target host 452 . . . and/or
`listen rate 425 of location coordinate packets 422 by portable electronic
`tracking device 402.” Ex. 2013 ¶ 53 (emphases added). Paragraph 55
`discloses that “[i]n response to receipt of updated set of network
`communication signaling protocols, portable location tracking device 402
`adjusts settings (an internal time schedule)” and “[p]ortable location
`tracking device 402 checks internal time schedule to determine if it should
`listen for (perform a location lookup of) location coordinates 422 from
`satellite navigation system 403.” Id. ¶ 55 (emphases added). Further,
`paragraphs 64–66 describe examples of update rate intervals that
`constitute the repeating time intervals for the request rate and/or listen rate.
`See id. ¶¶ 64–66. In light of these disclosures, and at this stage of the
`proceeding, we determine that the ’451 application adequately supports “a
`request rate representing a repeating time interval for location coordination
`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,” as recited in proposed substitute claim 20
`and similarly recited in proposed substitute claim 27.
`Thus, at this stage of the proceeding, on the record before us, Patent
`Owner has shown a reasonable likelihood that there is adequate written
`description support for proposed substitute claims 20, 23–25, 27, 29, 32,
`and 34.
`
`
`
`
`
`7
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`B. Patentability
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record,1 it appears that Petitioner (or the record) has shown a
`reasonable likelihood that proposed substitute claims 20, 23–25, 27, 29, 32, and 34
`are unpatentable.
`
`
`Does the record establish a reasonable likelihood that the proposed
`substitute claims are unpatentable?
`
`35 U.S.C. § 112, First Paragraph – Written Description
`No. On the current record, it appears that Petitioner has not established a
`reasonable likelihood that proposed substitute claims 20, 23–25, 27, 29,
`32, and 34 fail to comply with the written description requirement of
`35 U.S.C. § 112, first paragraph.
`As described in Section II.A.4 of this Preliminary Guidance, Petitioner
`contends that proposed substitute claims 20, 23–25, 27, 29, 32, and 34 fail
`to comply with the written description requirement. Opp. 5–6. For the
`reasons previously described in Section II.A.4 of this Preliminary
`Guidance, it does not appear, on this record, that Petitioner has shown a
`reasonable likelihood that proposed substitute claims 20, 23–25, 27, 29,
`32, and 34 fail to comply with the written description requirement.
`
`35 U.S.C. § 103(a) – Obviousness
`Yes. On the current record, it appears that Petitioner has established a
`reasonable likelihood that proposed substitute claims 20, 23–25, 27, 29,
`32, and 34 are unpatentable under 35 U.S.C. § 103(a).
`Both parties present constructions for “at least one of a request rate
`representing a repeating time interval for 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
`
`1 We express no view on the patentability of original claims 1, 4–6, 8, 10, 13, and
`15 in this Preliminary Guidance. Instead, we focus on limitations added to those
`claims in Patent Owner’s Motion to Amend.
`8
`
`
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`navigation system, 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 recited in proposed substitute claim 20 and
`similarly recited in proposed substitute claim 27. Mot. 16–19; Opp. 1–3,
`6. We determine that it is not necessary to provide an express
`interpretation of any claim terms at this juncture. See Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`Petitioner contends that proposed substitute claims 20, 23–25, 27, 29, 32,
`and 34 would have been obvious under 35 U.S.C. § 103(a) over Sakamoto
`(“Ground 1”), which is one of the grounds instituted in the Decision.
`Opp. 7. Petitioner further contends that proposed substitute claims 20, 23–
`25, 27, 29, 32, and 34 would have been obvious under 35 U.S.C. § 103(a)
`over the combination of Sakamoto and Huang (“Ground 4”), which is a
`new ground. Opp. 16.
`Patent Owner contends that no combination of the prior art of record or
`known to Patent Owner teaches or suggests proposed substitute claims 20,
`23–25, 27, 29, 32, and 34. Mot. 19–20. Specifically, Patent Owner
`contends Sakamoto teaches positioning modes (i.e., a normal sensitivity
`positioning mode, a high sensitivity position mode, or a power-off mode),
`in contrast to “a timing schedule for at least one of the request rate and the
`listen rate,” as recited in proposed substitute claim 20 and similarly recited
`in proposed substitute claim 27. Id. at 20–21. Patent Owner further
`contends that none of the asserted secondary references (e.g., applicant-
`admitted prior art (“AAPA”) and Hayasaka) compensate for the
`deficiencies of Sakamoto. Id. at 22. Patent Owner additionally contends
`that Huang does not teach the aforementioned limitation of proposed
`substitute claim 20 and a similarly-recited limitation of proposed substitute
`claim 27. Id. at 22–24.
`Ground 1: Proposed Substitute Claims 20, 23–25, 27, 29, 32, 34
`(Sakamoto)
`Petitioner contends that Sakamoto teaches “a request rate representing a
`repeating time interval for location coordination 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,” as recited in proposed substitute claim 20 and
`9
`
`
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`similarly recited in proposed substitute claim 27. Opp. 7, 10, 13.
`Specifically, Petitioner contends that Sakamoto discloses a positioning
`management server that sends position search request messages to a
`position information communication terminal in either a normal or high
`sensitivity positioning mode, where the position search request messages
`are sent at a regular rate (i.e., repeating time interval) based on the
`positioning mode, and where the position information control terminal
`adjusts the positioning mode responsive to an estimated charge level of a
`charging unit. Id. at 7–10 (citing Ex. 1004 ¶¶ 31–35, 40; Ex. 1003 ¶¶ 91,
`93–94; Paper 1, 34). Petitioner further cites Sakamoto’s disclosure that
`the position information communication terminal receives GPS location
`coordinate packets at a regular rate (i.e., repeating time interval) and that
`the rate changes based on the positioning mode. Id. at 10–12 (citing
`Ex. 1004 ¶¶ 36–37; Ex. 1003 ¶¶ 90, 92, 94; Paper 1, 34). Petitioner
`additionally contends Sakamoto’s short-cycle tracking request rate and
`GPS listen rate represent a timing schedule (i.e., time interval or update
`frequency) for the request rate and listen rate, respectively. Id. at 13–15
`(citing Ex. 1004 ¶¶ 37, 40; Ex. 1003 ¶¶ 89–94; Paper 1, 34).
`On this record, Petitioner has sufficiently shown that Sakamoto teaches “a
`request rate representing a repeating time interval for location coordination
`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,” as recited in proposed substitute claim 20
`and similarly recited in proposed substitute claim 27. Proposed substitute
`claims 23–25, 29, 32, and 34 depend from one of proposed substitute
`claims 20 and 27, and are substantially similar to original claims 4–6, 10,
`13, and 15, which were addressed in the Decision. Thus, on the current
`record, Petitioner has established a reasonable likelihood that proposed
`substitute claims 20, 23–25, 27, 29, 32, and 34 are unpatentable as obvious
`over Sakamoto.
`Ground 4: Proposed Substitute Claims 20, 23–25, 27, 29, 32, 34
`(Sakamoto and Huang)
`Petitioner contends that Huang, a newly asserted reference, qualifies as
`prior art to the ’774 patent. Opp. 16. According to Petitioner, Huang is in
`the same field of endeavor and is pertinent to a problem to be solved by
`the claimed invention of the ’774 patent, and thus is analogous art, because
`both Huang and the ’774 patent disclose monitoring a battery level of a
`portable communication terminal and reducing a GPS update frequency
`
`
`
`10
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`response to a low battery condition in order to reduce power consumption.
`Id. at 16–17 (citing Ex. 2011, 5:12–14, 5:47–49).
`Petitioner further contends that Huang teaches “a listen rate representing a
`repeating time interval for receipt of the location coordinate packets from
`a satellite navigation system” and “the updated set of network
`communication signaling protocols . . . representing a timing schedule for
`. . . the listen rate,” as recited in proposed substitute claim 20 and similarly
`recited in proposed substitute claim 27. Opp. 18, 20. Specifically,
`Petitioner contends that Huang discloses a mapping function for adjusting
`the position locating frequency (i.e., listen rate) of a GPS system based on
`a battery level of the GPS device. Id. at 18–20 (citing Ex. 2011, 2:38–44,
`5:5–7, Fig. 5; Ex. 1077 ¶ 4). Petitioner further contends Huang’s position
`locating frequency represents a timing schedule based on the ’774 patent’s
`disclosure that a “refresh rate” is an example of a timing schedule. Id. at
`20 (citing Ex. 1001, 12:59–60).
`Citing testimony from Mr. Andrews, Petitioner contends that a person of
`ordinary skill in the art would have been motivated to modify Sakamoto to
`include Huang’s function mapping battery level to an update interval in
`order to achieve the advantages expressly taught by Huang of reducing
`power consumption and increasing battery life in the GPS device. Opp. 21
`(citing Ex. 2011, 1:34–35, 5:12–14, 5:42–50; Ex. 1004 ¶ 46; Ex. 1077
`¶¶ 5, 9).
`On this record, Petitioner has sufficiently shown Huang teaches “a listen
`rate representing a repeating time interval for receipt of the location
`coordinate packets from a satellite navigation system” and “the updated set
`of network communication signaling protocols . . . representing a timing
`schedule for . . . the listen rate,” as recited in proposed substitute claim 20
`and similarly recited in proposed substitute claim 27. Further, Petitioner’s
`reasons for modifying Sakamoto to include Huang’s mapping function as a
`specific technique to reduce power consumption have a rational
`underpinning and are supported by the testimony of Mr. Andrews, which
`is unrebutted at this stage of the proceeding. Proposed substitute claims
`23–25, 29, 32, and 34 depend from one of proposed substitute claims 20
`and 27, and are substantially similar to original claims 4–6, 10, 13, and 15,
`which were addressed in the Decision. Thus, on the current record,
`Petitioner has established a reasonable likelihood that proposed substitute
`claims 20, 23–25, 27, 29, 32, and 34 are unpatentable as obvious over
`Sakamoto and Huang.
`
`
`
`11
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`
`On the current record, it appears that Petitioner has established a
`reasonable likelihood that proposed substitute claims 20, 23–25, 27, 29,
`32, and 34 are unpatentable as obvious under 35 U.S.C. § 103(a). We
`acknowledge that Patent Owner has not yet had the opportunity to respond
`to Petitioner’s contentions that proposed substitute claims 20, 23–25, 27,
`29, 32, and 34 are unpatentable as obvious. Patent Owner will have the
`opportunity to do so in its reply to Petitioner’s Opposition (or in a revised
`motion) in this proceeding.
`
`
`
`
`
`12
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`
`FOR PETITIONER:
`
`Jennifer Bailey
`Adam Seitz
`Robin Snader
`Jocelyn Ram
`Kelly Hughes
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`robin.snader@eriseip.com
`jocelyn.ram@eriseip.com
`kelly.hughes@eriseip.com
`
`FOR PATENT OWNER:
`
`Mitchell S. Zajac
`BUTZEL LONG, PC
`zajac@butzel.com
`
`
`
`
`
`13
`
`