throbber
Paper 48
`Trials@uspto.gov
`Entered: December 15, 2023
`571-272-7822
`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.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining No Remaining Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318(a)
`
`INTRODUCTION
`I.
`This Remand Decision is a final written decision on remand from the
`United States Court of Appeals for the Federal Circuit, which vacated and
`remanded certain parts of our original Final Written Decision (Paper 39,
`“Final Dec.”) in this inter partes review. See LBT IP I LLC v. Apple Inc.,
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`No. 2022-1613, 2023 WL 3914920 (Fed. Cir. June 9, 2023). 1 In particular,
`the Federal Circuit vacated and remanded our obviousness determinations
`with respect to claims 8, 10, 13, and 15 of U.S. Patent No. 8,497,774 B2
`(Ex. 1001, “the ’774 patent”). Paper 42, 13.
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73. For the reasons discussed below, Apple Inc. (“Petitioner”) has not
`demonstrated by a preponderance of the evidence that remaining challenged
`claims 8, 10, 13, and 15 of the ’774 patent are unpatentable.
`
`Background
`Petitioner filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of claims 1, 4–6, 8, 10, 13, and 15 (“the challenged claims”) of the
`’774 patent. LBT IP I LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 8. Taking into account the arguments presented in Patent Owner’s
`Preliminary Response, we determined that the information presented in the
`Petition established that there was a reasonable likelihood that Petitioner
`would prevail with respect to its unpatentability challenges. Pursuant to
`35 U.S.C. § 314, we instituted this proceeding on March 4, 2021, as to all
`challenged claims and all asserted grounds of unpatentability, which are
`reproduced below (Paper 9 (“Dec. on Inst.”)):
`
`
`A.
`
`
`1 A copy of the Federal Circuit’s decision has been entered as Paper 42, to
`which we will refer hereinafter.
`
`2
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`IPR2020-01189
`Patent 8,497,774 B2
`Claims Challenged
`1, 4–6, 8, 10, 13, 15
`1, 4–6, 8, 10, 13, 15
`1, 4–6, 8, 10, 13, 15
`
`35 U.S.C. §
`103(a)2
`103(a)
`103(a)
`
`References/Basis
`Sakamoto3
`Sakamoto, AAPA4
`Sakamoto, Hayasaka5
`
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 17, “PO Resp.”), and Petitioner filed a Reply to the Patent
`Owner Response (Paper 25, “Pet. Reply”). Patent Owner also filed a
`Sur-reply.6 Paper 31 (“PO Sur-reply”).
`Petitioner filed Declarations of Scott Andrews with its Petition
`(Ex. 1003) and with its Reply (Ex. 1077). Both parties filed a transcript of
`the deposition of Mr. Andrews. Exs. 1068, 2003.
`An oral hearing was held on December 8, 2021, and a transcript of the
`hearing is included in the record. Paper 38 (“Tr.”).
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, and 112.
`Because the application leading to the ’774 patent was filed before March
`16, 2013 (the effective date of the relevant amendments), the pre-AIA
`versions of §§ 102 and 103 apply.
`3 Japanese Unexamined Patent Application Publication No. JP 2004-
`37116A, published Feb. 5, 2004 (Ex. 1004, “Sakamoto”). Sakamoto is a
`Japanese-language publication (Ex. 1004, 36–49, 58) that was filed with an
`English-language translation (id. at 1–19, 21–34, 52–56) and declarations
`attesting to the accuracy of the translation (id. at 20, 50). Our citations to
`Sakamoto herein refer to the translation.
`4 Applicants’ Admitted Prior Art (Ex. 1001, 11:22–30, “AAPA”).
`5 U.S. Patent No. 5,845,142, filed Aug. 29, 1997, issued Dec. 1, 1998
`(Ex. 1011, “Hayasaka”).
`6 The parties also filed papers related to Patent Owner’s motion to amend,
`but the motion to amend is not within the scope of the instant remand.
`
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`
`We issued a Final Written Decision determining, inter alia, that
`Petitioner demonstrated by a preponderance of the evidence that claims 1, 4–
`6, 8, 10, 13, and 15 of the ’774 patent are unpatentable. Final Dec. 68. As
`part of our analysis for claims 8, 10, 13, and 15, we determined that the term
`“multitude” in the recited “multitude of threshold values” of claim 8 may
`include two threshold values. Id. at 12–18. We applied this interpretation as
`part of our determination that claims 8, 10, 13, and 15 would have been
`obvious over Sakamoto under 35 U.S.C. § 103(a). Id. at 37–44.
`On June 9, 2023, the Federal Circuit issued an opinion vacating and
`remanding our obviousness determinations with respect to claims 8, 10, 13,
`and 15 of the ’774 patent.7 Paper 42, 13. The court’s decision was based on
`its construction of “multitude of threshold values” in the following limitation
`of claim 8:
`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 to 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.
`Ex. 1001, 16:53–61 (emphasis added). The court stated that “[t]he plain and
`ordinary meaning of multitude in the ’774 patent does not encompass two
`threshold values.” Paper 42, 11. Further clarifying its construction, the
`court stated that “[w]e hold only that multitude does not include two but
`
`
`7 Patent Owner did not appeal our obviousness determinations regarding
`claims 1 and 4–6 or our denial of Patent Owner’s motion to amend. See
`Paper 42, 9.
`
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`must include as few as five threshold values.” Id. at 13. Thus, the court
`vacated our determination that Sakamoto’s two battery power level
`thresholds teach the claimed “multitude of threshold values.” Id.
`The court also noted that we did not address Petitioner’s alternative
`argument that Sakamoto teaches at least four threshold values—two battery
`level thresholds and two GPS signal level thresholds. Paper 42, 13.
`Accordingly, the court remanded this case to us to determine “whether
`multitude encompasses three or four threshold values and whether the two
`sets of threshold values disclosed in Sakamoto teach a multitude of threshold
`values.” Id.
`On remand, we asked the parties to brief whether—as a matter of
`claim construction—the “threshold values” in the recited “multitude of
`threshold values” of claim 8 are limited to battery power level threshold
`values or whether they may also include signal level threshold values. Paper
`43, 3. Petitioner filed an opening brief (Paper 45, “Pet. Remand Br.”) and a
`responsive brief (Paper 46, “Pet. Remand Resp.”). In parallel, Patent Owner
`also filed an opening brief (Paper 44, “PO Remand Br.”) and a responsive
`brief (Paper 47, “PO Remand Resp.”).
`
`The ’774 patent
`The ’774 patent is directed to location and tracking communication
`systems. Ex. 1001, 1:33–34. Figure 1 of the ’774 patent is reproduced
`below.
`
`B.
`
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`
`
`
`Figure 1 depicts a schematic of tracking device 100, which contains
`electronic components 101 such as transceiver 102, signal processing
`circuitry 104 (e.g., a microprocessor or other signal logic circuitry), and
`accelerometer 130. Id. at 4:62–64, 6:54–57. Location tracking circuitry 114
`(e.g., global positioning system (GPS) circuitry) calculates location data
`received and sends the data to signal processing circuitry 104. Id. at 7:17–
`19. Signal detecting circuitry 115 detects and measures signal power level.
`Id. at 7:22–23. Battery level monitor 116 detects a battery level of
`battery 118. Id. at 7:25–28.
`Tracking device 100 periodically checks availability of a GPS signal
`by performing a GPS signal acquisition to determine if a receive
`communication signal is above a first signal level. Id. at 8:7–10. Location
`tracking circuitry 114 or transceiver 102 may be placed in a sleep or standby
`mode to conserve a battery level of battery 118. Id. at 8:4–8. Electronic
`
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`Patent 8,497,774 B2
`tracking device 100 may resume GPS signal acquisition using GPS satellites
`when the acquired receive communication signal level is above the first
`signal level. Id. at 8:10–16.
`Accelerometer 130 may also activate if a power level of the receive
`communication signal (e.g., GPS signal) is insufficient for processing. Id. at
`10:47–49. In this case, processing unit 104 computes current location
`coordinates using acceleration measurements. Id. at 10:53–54. When the
`receive communication signal again becomes sufficient for processing,
`accelerometer 130 is deactivated and location tracking circuitry 114 is
`activated. Id. at 10:58–67. In this case, processing unit 104 resumes the
`calculation of location coordinates from the receive communication signal.
`Id.
`
`Figure 4 of the ’774 patent is reproduced below.
`
`
`
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`Figure 4, above, depicts screen display 400 of a personal communication
`device including a user definable adjustable power level monitor for an
`electronic tracking device. Id. at 5:5–7, 11:2–4, 11:12–17. Battery level
`monitor 116 measures in real-time battery charge level 406 of battery 118
`and predicts estimated remaining battery charge life 414 in response to
`battery charge level 406. Id. at 11:22–25, 13:52–58. Battery level
`monitor 116 also adjusts the power level applied to location tracking
`circuitry 114 or transceiver 102 responsive to one or more signal levels. Id.
`at 13:52–58.
`A local battery power adjustment mechanism generates in
`substantially real-time an updated set of network communication signaling
`protocols including, for example, update rate 446 (e.g., refresh rate) of
`location coordinate packets. Id. at 11:31–36. Update rate 446 consists of a
`request rate of location coordinate packets by the target host and/or a listen
`rate of location coordinate packets by the portable electronic tracking device.
`Id. at 11:36–41. The local battery power adjustment mechanism includes
`user-adjustable slider 4328 to graphically display in substantially real-time
`the trade-off relationships between remaining battery charge level 414 and
`update rate 446 of location coordinate packets. Id. at 11:53–57. The user
`may select a multitude of threshold values via slider 432 to intermittently
`activate or deactivate location tracking circuitry 114 in order to conserve the
`power of battery 118. Id. at 13:58–67. For example, the user may adjust
`slider 432 to choose a range of values between a lower update rate 446 (and
`
`
`8 Slider 432 is also called “user adjustable screen icon 432,” “on-line user
`adjustable cursor display 432,” and “active display 432” in the Specification
`of the ’774 patent. See, e.g., Ex. 1001, 11:53–57, 13:13–18, 13:58–67.
`
`8
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`Patent 8,497,774 B2
`less battery usage) and a higher update rate 446 (and more battery usage).
`Id. at 11:53–57, Fig. 4. This results in “an appropriate update[d] set of
`network communication signaling protocols to achieve a desired user
`defined battery operating environment, e.g., obtain optimal battery life,
`obtain optimal update rate, [and the] tradeoffs between them.” Id. at 11:58–
`63. This further may result in the local battery power adjustment mechanism
`communicating a message to activate or deactivate a portion of the
`transceiver circuitry, processor circuitry, or location tracking circuitry. Id. at
`11:44–53.
`The ’774 patent issued from Application No. 12/419,451 filed on
`April 7, 2009, which is a continuation-in-part of six applications. Ex. 1001,
`codes (21), (63).
`
`Illustrative Claim
`Of the remaining claims of the ’774 patent, claim 8 is independent.
`Claims 10, 13, and 15 depend from claim 8. Claim 8 is illustrative of the
`remaining claims and recites:
`8.
`A local charging management device to manage
`electrical resource capability for an electronic tracking device
`that is tracked by at least one other tracking device comprising:
`a battery power level monitor;
`a charging unit; and
`an electrical power resource management component to
`adjust cycle timing of at least one of a request rate of location
`coordinate packets to a target host and a listen rate of the
`location coordinate packets responsive to an estimated charge
`level of the charging unit,
`wherein the battery power level monitor measures a
`power level of the charging unit and adjusts a power level
`
`C.
`
`9
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`

`IPR2020-01189
`Patent 8,497,774 B2
`applied to location tracking circuitry responsive to 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.
`Ex. 1001, 16:43–61.
`
`Remaining Challenged Claims and Grounds
`We address below the remaining grounds at issue in this Remand
`Final Written Decision, which are summarized in the following table (Pet. 6;
`Dec. on Inst. 29; Paper 42, 17):
`Claims Challenged
`35 U.S.C. §
`8, 10, 13, 15
`103(a)
`8, 10, 13, 15
`103(a)
`8, 10, 13, 15
`103(a)
`
`References/Basis
`Sakamoto
`Sakamoto, AAPA
`Sakamoto, Hayasaka
`
`D.
`
`
`
`II. ANALYSIS
`
`A.
`
`Legal Standards
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`
`10
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`

`

`B.
`
`IPR2020-01189
`Patent 8,497,774 B2
`considerations.9 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
`559, 562 (CCPA 1978)).
`
`Level of Ordinary Skill in the Art
`For the same reasons discussed in our original Final Written Decision,
`we apply the following level of ordinary skill in the art: A person of
`ordinary skill in the art (or “POSITA”) would have had a bachelor’s degree
`in Electrical Engineering, Computer Engineering, Computer Science, or an
`equivalent degree, with two years of experience in GPS navigation, portable
`tracking devices, or related technologies. Final Dec. 10–11.
`
`C. Claim Interpretation
`In an inter partes review, we construe each claim
`using the same claim construction standard that would be used
`to construe the claim in a civil action under 35 U.S.C.
`[§] 282(b), including construing the claim in accordance with
`the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.
`37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the
`same as that of a district court. See id. Under the standard applied by
`district courts, claim terms are generally given their plain and ordinary
`meaning as would have been understood by a person of ordinary skill in the
`
`9 The trial record does not include any evidence of secondary considerations
`of nonobviousness.
`
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`art at the time of the invention and in the context of the entire patent
`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc). “There are only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`“Multitude”
`1.
`As discussed above, the Federal Circuit held that “[t]he plain and
`ordinary meaning of multitude in the ’774 patent does not encompass two
`threshold values.” Paper 42, 11. The court also stated that “multitude does
`not include two but must include as few as five threshold values.” Id. at 13.
`Thus, based on the court’s holding, a “multitude” cannot be two threshold
`values. Id. at 11, 13. Although the court left open the question of whether a
`“multitude” encompasses three or four threshold values, we do not need to
`answer this question to dispose of the remaining claims and grounds. See,
`e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`(“The Board is required to construe ‘only those terms . . . that are in
`controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`
`“The power level comprising a multitude of threshold values”
`2.
`In briefing on remand, the parties addressed the construction of
`“multitude of threshold values” in the following limitation from claim 8:
`
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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 to 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.
`Ex. 1001, 16:53–61 (emphasis added). In particular, the parties addressed
`whether—as a matter of claim construction—the “threshold values” in the
`recited “multitude of threshold values” are limited to battery power level
`threshold values or whether they may also include signal level threshold
`values. See Paper 43, 3.
`Petitioner argues that “any construction of ‘threshold values’ must
`include both battery power and GPS signal level threshold values.” Pet.
`Remand Br. 1. Petitioner notes that the ’774 patent discloses an
`embodiment where a GPS signal level is related to a threshold value. Id.
`(quoting Ex. 1001, 7:55–59). Petitioner explains how the system of the ’774
`patent attempts to save battery power by deactivating the GPS when GPS
`signal levels reach a GPS signal level threshold, i.e., “they are too weak.”
`Id. at 2 (citing Ex. 1001, 3:2–7, 7:55–8:3, 8:7–16, 8:67–9:3). Petitioner
`further explains that the GPS signal level threshold is used to determine
`whether to activate or deactivate accelerometer circuitry. Id. at 3–4 (citing
`Ex. 1001, 9:14–16, 10:38–52, Fig. 3). Petitioner contends that “this
`embodiment would be inoperable if it solely looked at a multitude of battery
`level thresholds” and “[a] construction of ‘multitude of threshold values’
`that excludes GPS signal levels would read out this specific embodiment of
`the ’774 Patent.” Id. at 4–6. Finally, Petitioner notes that “threshold value”
`appears only two times in the ’774 patent: once with reference to battery
`
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`power threshold levels, and another with reference to GPS signal level
`thresholds. Id. at 6–7 (citing Ex. 1001, 7:55–58, 13:58–62).
`Patent Owner argues that “[t]he claim language itself . . . shows that
`the ‘multitude of thresholds’ refers to the power level that is monitored and
`adjusted by the battery power level monitor.” PO Remand Br. 2. Patent
`Owner also argues that the specification of the ’774 patent “repeatedly and
`consistently identifies the claimed power level with battery power
`level 406.” Id. at 2–3 (citing Ex. 1001, 13:52–67). Patent Owner
`additionally argues that the specification “discloses that battery power level
`adjustments may be based on user input,” and that “the recited ‘multitude of
`threshold values’ corresponds to value 419, which is explicitly disclosed as
`defining a battery power level threshold that can be adjusted to a multitude
`of values.” Id. at 3–4 (citing Ex. 1001, 11:44–63, 13:58–67, Fig. 4). Patent
`Owner further highlights how the specification never “refers to a GPS signal
`level as a ‘power level,’ but only as a ‘signal level.’” Id. at 4 (citing
`Ex. 1001, 2:64–65, 7:57–58, 8:10, 8:16, 13:58, 16:56).
`In Petitioner’s responsive brief, Petitioner argues that the parties’
`dispute is simply whether the GPS signal level embodiment is part of the
`claims or not. Pet. Remand Resp. 1. According to Petitioner, Patent Owner
`ignores the GPS signal level embodiment in Figure 3 of the ’774 patent and
`instead focuses solely on the battery level embodiment of Figure 4. See id.
`at 1–3. Petitioner also argues that the transitional word “comprising” in “the
`power level comprising a multitude of threshold values” implies that the
`“‘multitude of threshold values’ may include the power level of a battery but
`the claim is not limited to only those power levels.” Id. at 4–5 (citing Crystal
`Semiconductor Corp. v. TriTech Microelectronics Intl’l, Inc., 246 F.3d 1336,
`
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`1362 (Fed. Cir. 2001)). As such, Petitioner contends that we should read the
`“broad, plain language used in claim 8” to cover both “the battery level
`embodiment columns 11-13, as relied upon by [Patent Owner], but also the
`precise GPS signal embodiment from column 7 through column 10.” Id. at
`5.
`
`In Patent Owner’s responsive brief, Patent Owner argues that
`Petitioner “ignores [the] clear claim language” and instead “relies on a single
`embodiment disclosed in the ’774 Patent that is separate and distinct from
`the embodiment covered by Claim 8’s ‘multitude of threshold levels.’” PO
`Remand Resp. 1. According to Patent Owner, “[t]he ’774 Patent discloses
`two distinct and complimentary embodiments that are each separately
`encompassed in Claim 8.” Id. at 2. Patent Owner also disputes that the
`’774 patent discloses a multitude of GPS signal level thresholds because the
`specification only refers to a singular GPS signal level threshold value. Id.
`at 3 (citing Ex. 1001, 7:55–59). Patent Owner additionally notes that the
`GPS signal level embodiment of Figure 3 was originally associated with
`prosecution claim 16, while the magnitude of power levels embodiment of
`Figure 4 was originally associated with prosecution claim 17. Id. at 5; see
`also Ex. 2019, 372 (prosecution claims 16 and 17 as originally filed); PO
`Remand Br. 3 (discussion about prosecution claim 17).
`To decide whether “the power level comprising a multitude of
`threshold values” includes GPS signal level thresholds, we start with the
`words of claim 8. Claim 8 recites a “battery power level monitor” that
`(1) “measures a power level of the charging unit” and (2) “adjusts a power
`level applied to location tracking circuitry responsive to one or more signal
`levels.” Claim 8 further recites that “the power level compris[es] a
`
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`multitude of threshold values determined by a user or system administrator.”
`The remainder of claim 8 states the purpose of the “multitude of threshold
`values,” which is “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.” The natural reading of these
`recitations is that the “power level” associated with the “multitude of
`threshold values” is the battery power level that is (1) measured by the
`battery power level monitor and (2) adjusted by the battery power level
`monitor and applied to location tracking circuitry. We also note that the
`claim language already incorporates a limitation directed to “signal levels”
`insofar as the battery power level monitor “adjusts a power level applied to
`location tracking circuitry responsive to one or more signal levels”
`(emphasis added). As such, the limitation “one or more signal levels” is
`recited separately from the limitation “the power level comprising a
`multitude of threshold values.” Given “[t]he general presumption that
`different terms have different meanings,” Chicago Bd. Options Exch., Inc. v.
`Int’l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012), we ascribe
`different meanings to the recited “signal levels” and “power level.”
`We next turn to the written description of the ’774 patent. The only
`reference to a “multitude of threshold values” appears in the following
`paragraph:
`In yet another advantage, the present invention power
`
`charging monitor (e.g., battery level monitor 116) measures a
`power level (e.g., battery power level 406) of power charging
`unit (e.g., battery 118) and adjusts a power level (e.g., battery
`power level 406) applied to, for example, location tracking
`circuitry (e.g., location tracking circuitry 114) or transceiver
`102 responsive to one or more signal levels. In contrast to
`previous manufacturer tracking device power level settings, the
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`present invention has the capability of power level (e.g., battery
`power level 406) adjustments include multitude of threshold
`values (see active display 432 of FIG. 4) that is determined by
`user or system administrator to intermittently activate or
`deactivate location tracking circuitry (e.g., location tracking
`circuitry 114) to conserve power of the power charging unit
`(e.g., battery 118) responsive to estimated charge level (e.g.,
`battery charge level 406).
`Ex. 1001, 13:52–67 (emphasis added); see Paper 42, 11 (court pointing to
`Figure 4 and this passage as “[t]he only example of a multitude of threshold
`values provided in the specification”). Thus, the specification directly links
`the “multitude of threshold values” with battery power level 406. Ex. 1001,
`13:52–67. It also links the “multitude of threshold values” with active
`display 432 in Figure 4, which is also called “slider 432,” “user adjustable
`screen icon 432,” “on-line user adjustable cursor display 432.” See id. at
`11:53–57, 13:13–18, 13:58–67. The specification states that “user
`adjustable electronic display 432 . . . indicates [the] current level of battery
`406 and allows [the] user a capability to adjust power level thereof.”
`Accordingly, a user may adjust screen cursor value 419 within active display
`432 to choose the desired battery power threshold value among the multitude
`of battery power threshold values. See id. at 11:44–67, 13:58–67, 15:17–21,
`Fig. 4. Both parties acknowledge that this embodiment is within the scope
`of the recited “multitude of threshold values.” Pet. Remand Br. 6–7; PO
`Remand Br. 3–4. We agree.
`The written description uses the word “threshold value” in only one
`other passage: “In one embodiment, the accelerometer 130 activates upon
`one or more designated antenna(s), e.g., antennas 122 a, 122 b, detecting a
`first signal level, e.g., a low signal level or threshold value, as specified by,
`for instance, a user or system administrator.” Ex. 1001, 7:55–59 (emphasis
`
`17
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`added). Petitioner argues that this passage “describes an embodiment that
`includes GPS signal level as part of the multitude of threshold values.” Pet.
`Remand Br. 1. Yet the mere use of the word “threshold” in this context does
`not tie embodiments pertaining to a signal level, such as the one described in
`Figure 3, to the recitation “the power level comprising a multitude of
`threshold levels.” Furthermore, as stated above, claim 8 already includes a
`limitation directed to adjusting the applied power level to the location
`tracking circuitry “responsive to one or more signal levels,” which is
`consistent with “the low signal level or threshold value” in this passage from
`the written description. See Ex. 1001, 16:53–61; see also id. at 13:52–58
`(“[P]ower charging monitor (e.g., battery level monitor 116) measures a
`power level (e.g., battery power level 406) of power charging unit (e.g.,
`battery 118) and adjusts a power level (e.g., battery power level 406) applied
`to, for example, location tracking circuitry (e.g., location tracking
`circuitry 114) or transceiver 102 responsive to one or more signal levels”
`(emphasis added)).
`Petitioner also argues that the signal level embodiment of Figure 3
`“would be inoperable if it solely looked at a multitude of battery level
`thresholds.” Pet. Remand Br. 4–5. According to Petitioner, a construction
`limiting the “multitude of threshold values” to battery power thresholds
`would read out the Figure 3 embodiment. Id. at 5–6; see also Pet. Remand
`Resp. 1–7 (“The dispute is simply whether that embodiment is part of the
`claims or not.”). We disagree. As stated above, claim 8 already recites that
`the battery power level monitor adjusts the battery power level “applied to
`location tracking circuitry responsive to one or more signal levels,” which
`incorporates the notion of responding to a signal level threshold. See
`
`18
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`Ex. 1001, 13:52–58, 16:53–61. Thus, we do not agree that Patent Owner’s
`proposed construction of the “multitude of threshold values” reads out a
`signal level embodiment.10 The existing “signal levels” recitation in claim 8
`also undermines Petitioner’s argument that Patent Owner’s proposed
`construction would result in a system that “only looked at a multitude of
`battery threshold values” and could “never deactivate the GPS circuitry.”
`Pet. Remand Br. 5.
`We also have considered Petitioner’s arguments that the word
`“comprising” in “the power level comprising a multitude of threshold
`values” “compels a conclusion that the ‘threshold values’ in claim 8 are not
`limited to only battery levels.” Pet. Remand Resp. 4–5 (citing Crystal
`Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336,
`1362 (Fed. Cir. 2001); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
`(Fed. Cir. 1997)). We do not agree with the premise of Petitioner’s
`arguments because this limitation defines what “the power level” comprises,
`not what “a multitude of threshold values” comprises. Thus, contrary to
`Petitioner’s arguments, whatever follows the term “comprising” in this
`limitation must still be a “power level” to be within the scope of the claim.
`As such, “the power level comprising a multitude of threshold values” refers
`
`
`10 We further note that where, as here, “the patent describes multiple
`embodiments, every claim does not need to cover every embodiment.”
`Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1026 (Fed. Cir.
`2015); see also AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504
`F.3d 1236, 1248 (Fed. Cir. 2007) (“[E]very claim need not contain every
`feature taught in the specification.”). Thus, even if claim 8 did not recite a
`limitation directed to a signal level threshold, the lack of such a limitation
`would not support Petitioner’s proposed construction.
`
`
`19
`
`

`

`IPR2020-01189
`Patent 8,497,774 B2
`to a power level having threshold values, not something else having
`threshold values. We further note that Petitioner’s arguments are based on
`case law giving “comprising” legal effect as a transitional phrase between
`the preamble and the body of a claim. In contrast, the word “comprising”
`here is in the body of the claim, so it has “no special legal effect” and
`“should be interpreted according to the normal rules of claim interpretation.”
`Moleculon Rsch. Corp. v. CBS, Inc., 793 F.2d 1261, 1272 n.8 (Fed. Cir.
`1986). Therefore, consistent with Moleculon, we interpret “comprising”
`here as “‘having’ but

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