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 PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,497,774
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`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 PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,497,774
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`B.
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ...................................................................................III
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`PETITIONER HAS NOT MET ITS BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD OF SUCCESS THAT ANY OF THE
`CHALLENGED CLAIMS ARE OBVIOUS. ................................................. 4
`A.
`Petitioner’s Proposed Combinations of References are Improper. ....... 4
`i.
`Petitioner’s Proposed Combinations Impermissibly Add
`an Element or Functionality Already Present in
`Sakamoto. ......................................................................... 6
`Even Under Petitioner’s Proposed Combinations, It Has Failed To
`Show That The Prior Art Discloses All Limitations. ............................ 8
`i.
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 1(e) “Local Battery Power
`Adjustment Mechanism to Generate in Substantially
`Real-Time an Updated Set of Network Communication
`Signaling Protocols Associated with at least one of a
`Request Rate of Location Coordinate Packets to be
`Communicated to a Target Host and a Listen Rate of the
`Location Coordinate Packets From a Satellite Navigation
`System, the Updated Set of Network Communication
`Signaling Protocols Having a Value That is Responsive
`to a User Input Request”. .................................................. 8
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(c) “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”. .............................13
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(d) “Wherein the Battery Power
`
`ii.
`
`iii.
`
`
`
`i
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`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”. ..........................................15
`III. CONCLUSION ..............................................................................................18
`
`
`
`
`
`ii
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`KSR Int’l Co. v. Teleflex, Inc.,
`
`550 U.S. 398 (2007)......................................................................................... 5
`
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`
`566 F.3d 989 (Fed. Cir. 2009) ......................................................................... 5
`
`Board Decisions
`
`Apotex Inc. v. Wyeth LLC,
`
`IPR2014-00115, Paper 94 (PTAB Apr. 20, 2015) .......................................... 5
`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
`
`IPR2015-00951, Paper 8 (PTAB Sept. 17, 2015) ........................................... 5
`
`Stryker Corp. v. Karl Storz Endoscopy America, Inc.,
`
`IPR2015-00764, Paper 13 (PTAB Sept. 2, 2015) ........................................... 5
`
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`
`IPR2015-00276, Paper 8 (PTAB Jun. 1, 2015) ............................................... 5
`
`
`
`
`
`
`
`
`iii
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`The Petitioner has not demonstrated a reasonable likelihood of success in its
`
`argument that any of the challenged claims of U.S. Patent No. 8,497,774 (“the ’774
`
`Patent”) are invalid as obvious because (i) the Petitioner’s proposed combinations
`
`of references are improper, and (ii) even if the Petitioner’s proposed combinations
`
`of references were proper, the references on which it relies nonetheless fail to
`
`disclose required limitations from the challenged claims. Because the Petitioner has
`
`not met its burden, its request for institution of an inter partes review (“IPR”) should
`
`be denied.
`
`I.
`
`INTRODUCTION
`
`The ’774 Patent describes an electronic tracking device that includes a battery
`
`power monitor, a charging unit, and an electrical power resource management
`
`component. Ex. 1001, Abstract. The electrical power resource management
`
`component adjusts cycle timing of one or more of control parameters for the tracking
`
`device and the control parameters include request rate of location coordinate packets
`
`to a target host and a listen rate of the location coordinate packets. Id.
`
`Independent claim 1 recites, in part:
`
`local battery power adjustment mechanism to generate in substantially
`
`real-time an updated set of network communication signaling protocols
`
`associated with at least one of a request rate of location coordinate
`
`packets to be communicated to a target host and a listen rate of the
`
`
`
`1
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`location coordinate packets from a satellite navigation system, the
`
`updated set of network communication signaling protocols having a
`
`value that is responsive to a user input request;
`
`Id., Claim 1.
`
`Independent claim 8 recites, in part:
`
`an electrical power resource management component to adjust cycle
`
`timing of at least one or 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 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.
`
`Id., Claim 8.
`
`Thus, independent claims 1 and 8 each recites, in part, updating or adjusting
`
`“at least one of a request rate of location coordinate packets to be communicated to
`
`a target host and a listen rate of the location coordinate packets from a satellite
`
`
`
`2
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`navigation system.” In addition, independent claim 8 recites adjusting “a power
`
`level” that includes “a multitude of threshold values determined by a user or system
`
`administrator.”
`
`The ’774 Patent discloses:
`
`In one embodiment, local battery power adjustment mechanism 416
`
`generates
`
`in substantially
`
`real-time updated set of network
`
`communication protocols. In one variant, updated set of network
`
`communication signaling protocols communicated, for instance,
`
`includes an update rate (e.g., refresh rate) of location coordinate packets
`
`446. In one example, update rate of location coordinate packets 446
`
`includes request rate 420 of location coordinate packets 422 by target
`
`host 452 (e.g., a computer server) and/or listen rate 425 of location
`
`coordinate packets 422 by portable electronic tracking device 402.
`
` Id., 11:31-41. Thus, the ’774 Patent clearly discloses adjusting a rate at which
`
`location coordinate packets are either received or transferred.
`
`The ’774 Patent also discloses:
`
`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,
`
`
`
`3
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`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 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 1140) to conserve power of
`
`the power charging unit (e.g., battery 118) responsive to estimated
`
`charge level (e.g., battery charge level 406).
`
`Id., 13:52-67. Thus, the ’774 Patent clearly discloses the distinguishing feature of
`
`power level adjustments based on a multitude of threshold values.
`
`II.
`
`PETITIONER HAS NOT MET ITS BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD OF SUCCESS THAT ANY OF
`THE CHALLENGED CLAIMS ARE OBVIOUS.
`
`Because Petitioner relies on improper proposed combinations of references,
`
`
`
`and because the references relied upon by Petition do not disclose required
`
`limitations from those claims, the petition must be denied.
`
`A.
`
`Petitioner’s Proposed Combinations of References are
`Improper.
`
`
`
`
`4
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`The Petitioner bears the burden of proof for showing that a proposed
`
`combination is proper. “An invention ‘composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.’” Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`
`IPR2015-00276, Paper 8, slip op. at 10 (PTAB Jun. 1, 2015) (quoting KSR Int’l Co.
`
`v. Teleflex, Inc., 550 U.S. 398, 418 (2007). “A party that petitions the Board for a
`
`determination of obviousness must show that ‘a skilled artisan would have been
`
`motivated to combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
`
`success in doing so.’” Apotex Inc. v. Wyeth LLC, IPR2014-00115, Paper 94, slip op.
`
`at 11 (Apr. 20, 2015) (quoting Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`
`566 F.3d 989, 994 (Fed. Cir. 2009)).
`
`The Petitioner must show that a proposed combination does not impermissibly
`
`add an element or functionality already present in the primary reference. See TRW
`
`Automotive U.S. LLC v. Magna Electronics, Inc., IPR2015-00972, Paper 9, slip op.
`
`at 15, 17 (September 16, 2015) (finding no reason to combine where “the camera in
`
`[the ‘094 patent] already is mounted to the windshield using a bracket and does not
`
`require the direct optical coupling provided by the fastening device in [the ‘633
`
`patent]”). See also Stryker Corp. v. Karl Storz Endoscopy America, Inc., IPR2015-
`
`00764, Paper 13, slip op. at 13 (September 2, 2015) (“[W]e fail to see, and Petitioner
`
`
`
`5
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`does not adequately explain, why it would be obvious to add a translator to
`
`redundantly perform the function that Petitioner maintains is performed by the
`
`interconnect devices and network computer located within the surgical network.”).
`
`i.
`
`Petitioner’s Proposed Combinations Impermissibly
`Add an Element or Functionality Already Present in
`Sakamoto.
`
`The Petitioner’s primary reference is the Certified English Translation of
`
`Japanese Unexamined Patent Application Publication No. JP 2004-37116A to
`
`Sakamoto (“Sakamoto”) (Ex. 1004). Sakamoto is directed to a GPS system
`
`including a portable terminal having a GPS receiver for determining a position of
`
`the terminal, and a remote server to which the position information can be
`
`transmitted. Ex. 1004, Abstract, [0018], [0030-0031].
`
`The Petitioner relies on purported Applicant Admitted Prior Art (AAPA) as a
`
`secondary reference under Ground 2. In particular, the Petitioner asserts “the ’774
`
`Patent admits that estimating or predicting a remaining battery charge life can be
`
`done by ‘standard techniques’.” Paper 1, 55 (citing Ex. 1001, 11:23-30).
`
`However, the Petitioner also asserts:
`
`Sakamoto teaches a battery power monitor to measure in real-time the
`
`battery charge level as claimed. Sakamoto’s battery control unit 16
`
`“constantly monitors the remaining battery level” (i.e., the battery
`
`charge level). Sakamoto, [0028]. Sakamoto determines a “low”
`
`
`
`6
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`remaining battery level by comparing the monitored level to a
`
`predetermined threshold. Sakamoto, [0028]; [0039]. A POSITA would
`
`have understood that in order for Sakamoto’s battery control unit to
`
`“monitor[]” the remaining battery level, it repeatedly measures the
`
`battery level in order to compare the measured value to the
`
`predetermined threshold. Dec., 85-86. Thus, Sakamoto’s battery
`
`control unit “measures … the battery charge level.”
`
`Paper 1, 23-24. Thus, the Petitioner asserts that both Sakamoto and AAPA disclose
`
`the same functionality. As such, it would not have been obvious to modify Sakamoto
`
`with the redundant functionality of AAPA as proposed by the Petitioner.
`
`The Petitioner relies on U.S. Patent No. 5,845,142 to Hayasaka (“Hayasaka”)
`
`(Ex. 1011) as a secondary reference under Ground 3. In particular, the Petitioner
`
`asserts “Sakamoto teaches a ‘a battery power monitor to measure in real-time the
`
`battery charge level”, but the Petitioner also asserts “Hayasaka teaches estimating a
`
`both a remaining battery charge level and a remaining battery charge life.” Paper 1,
`
`61. Thus, the Petitioner, in similar fashion to Ground 2, asserts that Sakamoto and
`
`Hayasaka disclose the same functionality. As such, it would not have been obvious
`
`to modify Sakamoto with the redundant functionality of Hayasaka as proposed by
`
`the Petitioner.
`
`
`
`7
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`B.
`
`Even Under Petitioner’s Proposed Combinations, It Has
`Failed To Show That The Prior Art Discloses All Limitations.
`
`Even if the Petitioner’s proposed combinations are proper, the Petitioner has
`
`still failed to show that the prior art on which it relies discloses all of the limitations
`
`of the challenged claims.
`
`i.
`
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 1(e) “Local Battery Power
`Adjustment Mechanism to Generate in Substantially
`Real-Time an Updated Set of Network Communication
`Signaling Protocols Associated with at least one of a
`Request Rate of Location Coordinate Packets to be
`Communicated to a Target Host and a Listen Rate of
`the Location Coordinate Packets From a Satellite
`Navigation System, the Updated Set of Network
`Communication Signaling Protocols Having a Value
`That is Responsive to a User Input Request”.
`
`The Petitioner has failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “local battery power
`
`adjustment mechanism to generate in substantially real-time an updated set of
`
`network communication signaling protocols associated with at least one of a request
`
`rate of location coordinate packets to be communicated to a target host and a listen
`
`rate of the location coordinate packets from a satellite navigation system, the updated
`
`set of network communication signaling protocols having a value that is responsive
`
`to a user input request.” This limitation is recited in independent claim 1.
`
`
`
`8
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`The Petitioner relies on Sakamoto as disclosing this limitation. Sakamoto is
`
`directed to a GPS system including a portable terminal having a GPS receiver for
`
`determining a position of the terminal, and a remote server to which the position
`
`information can be transmitted. Ex. 1004, Abstract, [0018], [0030-0031]. In
`
`particular, Sakamoto explicitly discloses:
`
`When the positioning mode control unit 22 determines that the high
`
`sensitivity positioning mode is required when the signal level value
`
`is equal to or lower than a predetermined threshold value, …; if it
`
`is determined that the normal sensitivity positioning mode is
`
`required when the signal level value is equal to or higher than a
`
`predetermined threshold value, …. If it is determined that the
`
`positioning cannot be performed when the signal level value is
`
`equal to or lower than a predetermined threshold value, the
`
`position search may be stopped.
`
`Id., [0038] (emphasis added). Thus, Sakamoto discloses a “normal sensitivity
`
`positioning mode,” a “high sensitivity positioning mode,” and a mode in which
`
`“position search may be stopped” when “positioning cannot be performed.”
`
`Furthermore, Sakamoto explicitly discloses two predetermined threshold values: a)
`
`a threshold value between the normal mode and the high sensitivity mode; and b) a
`
`threshold value for when to stop performing positioning.
`
`
`
`9
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`Sakamoto further discloses:
`
`…a series of positioning operations in which the power is turned on by
`
`the position request from the power-off state and the positioning is
`
`successful and then the power is turned off again is set to the normal
`
`sensitivity positioning mode.
`
`…the series of positioning operations for constantly operating the GPS
`
`receiver 10 is referred to as the “high sensitivity positioning mode.”
`
`Id., [0024]-[0025].
`
`In context, Sakamoto discloses that a) the GPS receiver intermittently operates
`
`when a signal level exceeds a first threshold, b) the GPS receiver constantly operates
`
`when the signal level does not exceed the first threshold, and c) the GPS receiver
`
`stops operating when the signal level falls below a second threshold. Stated another
`
`way, Sakamoto teaches that a GPS receiver operates normally when a signal level is
`
`normal, the GPS receiver works harder when the signal level is less than normal, and
`
`the GPS receiver stops working when the signal level is such that the GPS receiver
`
`cannot perform GPS positioning.
`
`As discussed above in Section I, the ’774 Patent clearly discloses adjusting a
`
`rate at which location coordinate packets are either received or transferred and refers
`
`to such rate as, for example, “a refresh rate.” The ’774 Patent further discloses:
`
`
`
`10
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`In response to receipt of updated set of network communication
`
`signaling protocols, portable location tracking device 402 adjusts
`
`settings (an internal time schedule) and acknowledges receipt of the
`
`message to target host 452. Portable 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 or an adjacent portable location coordinate
`
`tracking device …. Portable location tracking device 402 obtains
`
`location coordinates 422 and stores, for instance, in one or more internal
`
`breadcrumb memory location(s). Based on the internal time schedule,
`
`portable location tracking device 402 determines whether to transmit
`
`contents of the one or more breadcrumb memory location(s) to target
`
`host 452.
`
`Ex. 1001, 12:1-18. As such, the request rate of location coordinate packets to be
`
`communicated to a target host and the listen rate of the location coordinate packets
`
`from a satellite navigation system represent a schedule for when repeating
`
`activity(ies) occur.
`
`The ’774 Patent further discloses three practical examples. In one, a lost dog
`
`has a portable tracking device and a user updates a set of network communication
`
`protocols such that “the high setting corresponds to 15 minute intervals for location
`
`
`
`11
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`and 15 minute intervals for transmission to target host, e.g., server.” Id., 14:4-7. In
`
`a second example, “a teenager borrows a parent’s car having portable location
`
`tracking device 402” and a user updates a set of network communication protocols
`
`such that “the medium setting corresponds to 15 minute intervals for location and 60
`
`minute intervals for transmission to the target host, e.g., server.” Id., 14:16-25. In
`
`a third example, “a provider of construction equipment having portable tracking
`
`device 402 rents the equipment to contractors” and a user updates a set of network
`
`communication protocols such that “the low setting corresponds to 1440 minute
`
`intervals (24 hours) for location coordinates and 1440 minute intervals (24 hours)
`
`for transmission to the target host, e.g., server.” Id., 14:39-47. As such, this
`
`limitation is directed to updating a schedule of repeating events.
`
`Sakamoto does not disclose a schedule of repeating events or any updating of
`
`such schedule. While Sakamoto’s normal sensitivity positioning mode may involve
`
`repeatedly turning a GPS receiver on or off, Sakamoto explicitly discloses “in order
`
`to obtain terminal user A’s own position; a position request is sent to the positioning
`
`control unit 13 by pressing the button provided on the man-machine interface control
`
`unit 14.” Ex. 1004, [0020]. Thus, Sakamoto’s normal sensitivity positioning mode
`
`is a manual mode. Similarly, Sakamoto discloses:
`
`… Therefore, once the positioning is successful, if the GPS receiver 10
`
`continues to operate without being cut off, at the next position request,
`
`
`
`12
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`even if the signal level from the GPS satellite is lower than that at the
`
`time of the first positioning, the positioning can be successful. In this
`
`way, the series of positioning operations for constantly operating the
`
`GPS receiver 10 is referred to as the “high sensitivity positioning
`
`mode.”
`
`Id., [0025]. That is, the high sensitivity mode is a continuous mode. Neither of these
`
`modes are based on a schedule and Sakamoto does not disclose any schedule or any
`
`updating of a schedule. The only other mode of Sakamoto is that of position search
`
`stopped, which is also not based on a schedule.
`
`For at least this reason, the Petitioner has failed to meet its burden of showing
`
`a reasonable likelihood that the prior art on which it relies discloses this limitation
`
`as recited in independent claim 1. Dependent claims 4-6 also incorporate this
`
`limitation. As such, the Petitioner’s request for institution of an IPR should be
`
`denied at least for claims 1 and 4-6 under all grounds of unpatentability.
`
`ii.
`
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(c) “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.”
`
`Petitioner has also failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “an electrical power
`
`
`
`13
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`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.”
`
`This limitation is recited in independent claim 8.
`
`The Petitioner relies on Sakamoto as disclosing this limitation with a rationale
`
`similar to that asserted in relation to limitation 1(e). In particular, the Petitioner
`
`asserts:
`
`Sakamoto’s electrical resource management component adjusts the
`
`cycle timing of the request rate and/or listen rate when it generates an
`
`updated set of communication signaling protocols associated with the
`
`request rate and listen rate. See § C.6.c) above; Dec., 98 (opining that
`
`each communication signaling protocol has a different cycle rate and
`
`that generating an updated set of communication signaling protocols
`
`adjusts the cycle timing of the listen rate).
`
`Paper 1, 46-47.
`
`However, as discussed above in relation to limitation 1(e), Sakamoto does not
`
`disclose a schedule of repeating events or any updating of such schedule. To the
`
`contrary, Sakamoto explicitly discloses a “normal sensitivity positioning mode” that
`
`responds to manual requests, a “high sensitivity positioning mode” that continuously
`
`performs positioning, and a stop positioning mode. Again, none of these modes are
`
`
`
`14
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`based on a schedule and Sakamoto does not disclose any schedule or any updating
`
`of a schedule.
`
`For at least this reason, the Petitioner has failed to meet its burden of showing
`
`a reasonable likelihood that the prior art on which it relies discloses this limitation
`
`as recited in independent claim 8. Dependent claims 10, 13, and 15 also incorporate
`
`this limitation. As such, the Petitioner’s request for institution of an IPR should be
`
`denied at least for claims 8, 10, 13, and 15 under all grounds of unpatentability.
`
`iii. The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(d) “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.”
`
`Petitioner has also failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “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
`
`
`
`15
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`circuitry to conserve power of the charging unit in response to the estimated charge
`
`level of the charging unit.” This limitation is recited in independent claim 8.
`
`The Petitioner relies on Sakamoto as disclosing this limitation. More
`
`specifically, in relation to “the power level comprising a multitude of threshold
`
`values determined by a user or system administrator,” the Petitioner asserts:
`
`Sakamoto discloses that the remaining battery amount (power level of
`
`the charging unit) has two thresholds against which it is compared to
`
`determine the positioning mode. Sakamoto discloses that, when the
`
`battery power falls below a first, user-defined threshold, the
`
`positioning mode switches from high sensitivity positioning mode to
`
`normal sensitivity mode, thereby causing the GPS receiver to be
`
`intermittently activated (as claimed), as opposed to the continuous
`
`activation of high sensitivity positioning mode. Sakamoto, [0029].
`
` Paper 1, 50. That is, the Petitioner acknowledges that Sakamoto only discloses two
`
`thresholds and three operating modes.
`
`The Petitioner, however, does not explicitly address the claim term
`
`“multitude” or the phrase “multitude of threshold values.” Rather, the Petitioner
`
`appears to assert that Sakamoto’s two thresholds are sufficient to form a multitude.
`
`A definition for multitude is “a great number.” dictionary.com (Dec. 9, 2020, 6:32
`
`PM), https://dictionary.com/browse/multitude?s=1. That definition is consistent
`
`
`
`16
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`with the ’774 Patent, which identifies a “multitude of threshold values” by referring
`
`to “active display 432 of Fig. 4,” which includes between five and seven thresholds,
`
`depending on whether one includes the endpoints as thresholds. ’774 Patent, 13:61-
`
`62; Fig. 4. Sakamoto’s two thresholds are not a great number and cannot be a
`
`multitude. Therefore, Sakamoto does not and cannot disclose this limitation.
`
`For at least this reason, the Petitioner has failed to meet its burden of showing
`
`a reasonable likelihood that the prior art on which it relies discloses this limitation
`
`as recited in independent claim 8. Dependent claims 10, 13, and 15 also incorporate
`
`this limitation. As such, the Petitioner’s request for institution of an IPR should be
`
`denied at least for claims 8, 10, 13, and 15 under all grounds of unpatentability.
`
`
`
`
`
`
`
`17
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`III. CONCLUSION
`
`For the reasons set forth above, Petitioner has not demonstrated a reasonable
`
`likelihood of success on its obviousness argument for any claim in the ’774 Patent.
`
`Accordingly, the petition should be denied.
`
`
`
`Respectfully submitted,
`
`BUTZEL LONG, PC
`
`
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`Date: December 9, 2020
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
`
`
`18
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`
`REVIEW OF U.S. PAT. NO. 8,497,774 contains 3,645 words, excluding the parts
`
`of the petition exempted by 37 C.F.R. § 42.24(a), as measured by the word-
`
`processing system used to prepare this paper.
`
`BUTZEL LONG, PC
`
`
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`Date: December 9, 2020
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`
`
`
`
`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)
`
`the foregoing PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`
`FOR INTER PARTES REVIEW OF U.S. PAT. NO. 8,497,774 is being served
`
`electronically via e-mail on December 9, 2020, in its entirety on the following
`
`counsel of record 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
`
`
`
`
`
`
`
`
`Date: December 9, 2020
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
`
`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
`
`BUTZEL LONG, PC
`
`
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
