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.
`____________
`
`IPR2020-01190
`Patent 8,542,113 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
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`I. INTRODUCTION
`On March 4, 2021, we instituted trial as to claims 1–20 of U.S. Patent No.
`8,542,113 B2. Paper 9 (“Decision”). After institution, Patent Owner filed a
`Motion to Amend in which it proposes substitute claims 21–40 to replace original
`claims 1–20. 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
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`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
`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 for proposed substitute claims 21–26 and 37–40 but
`not for proposed substitute claims 27–36.
`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. Patent Owner proposes no more than one substitute claim for each
`challenged claim. Mot. 4. Petitioner does not argue otherwise. See
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`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 21–40 retain all the features of the
`corresponding original claims while only adding further limitations.
`Mot. 2–3. Petitioner does not argue otherwise. See generally Opp. Thus,
`the amendment does not seek to enlarge the scope of the claims.
`
`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))
`As to proposed substitute claims 21–26 and 37–40, No. On this record,
`Patent Owner appears to have identified adequate written description
`support for proposed substitute claims 21–26 and 37–40. Mot. 4–9, 14–
`17.
`As to proposed substitute claims 27–36, Yes. On this record, Patent
`Owner does not appear to have identified adequate written description
`support for the limitation “the primary location tracking circuitry
`continues to consume at least reduced power,” as recited in proposed
`substitute claims 27–36. Mot. 9–10.
`The ’113 patent issued from Application Ser. No. 13/356,614 (“the ’614
`application), which is a division of Application Ser. No. 11/969,905 (“the
`’905 application). Ex. 1001, codes (21), (62); see also Mot. 4–5. To show
`support for the proposed substitute claims, Patent Owner cites the
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`published version of the ’905 application—U.S. Pub. No. 2009/0174603
`A1 (“the ’603 publication”)—rather than the ’905 application or the ’643
`application. See Mot. 5–17 (citing Ex. 2004); Ex. 2004 (the ’603
`publication). Patent Owner, however, was required to cite the ’905
`application itself as well as the ’614 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, and in an earlier filed disclosure for each claim for which benefit of
`the filing date of that disclosure is sought). Here, the ’603 publication
`appears to be substantially identical to the ’905 and ’614 applications, 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 ’905 and ’614 applications. In the event that
`Patent Owner files either a reply to Petitioner’s Opposition or a revised
`motion, Patent Owner should conform to Lectrosonics and include
`citations to the ’614 application as well as the ’905 application.
`Petitioner disputes Patent Owner’s written description showing for
`proposed substitute claims 27–36 with respect to the “continues to
`consume at least reduced power” limitation. Opp. 1–2. Petitioner also
`disputes Patent Owner’s written description showing for proposed
`substitute claims 37–40 with respect to the “battery power monitor”
`limitation. Id. at 2–3. Petitioner does not dispute Patent Owner’s written
`description showing for proposed substitute claims 21–26.
`Comments Regarding Proposed Substitute Claims 21–26
`At this stage of the proceeding, we determine that the ’905 application
`adequately supports proposed substitute claims 21–26. See Mot. 5–9.
`Comments Regarding Proposed Substitute Claims 27–36
`Petitioner contends Patent Owner has not shown that the ’905 application
`adequately supports “the primary location tracking circuitry continues to
`consume at least reduced power,” as recited in proposed substitute
`claim 27. Opp. 1. Proposed substitute claims 28–36 depend from
`proposed substitute claim 27 and include the same limitation. Petitioner
`contends that (1) the word “continue” is not disclosed in the ’905
`application at all; (2) there is no disclosure of any element that “continues
`to consume” power; and (3) there is no disclosure of any element that
`continues to consume “at least reduced power.” Id. at 1–2. Petitioner
`further contends that neither paragraphs 31, 32, and 36 (cited by Patent
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`Owner in its Motion) nor any other portion of the ’905 application
`provides adequate written description for the primary location tracking
`circuitry continuing to consume at least reduced power. Id. at 2 (citing
`Mot. 9–10).
`At this stage of the proceeding, we find that the portions of the ’905
`application cited by Patent Owner do not adequately support “the primary
`location tracking circuitry continues to consume at least reduced power,”
`as recited in proposed substitute claim 27. Paragraphs 31 and 32 of the
`’905 application describe a “sleep mode” and a “standby mode.” See
`Ex. 2004 ¶¶ 31–32. Paragraph 36 of the ’905 application states that “the
`present invention conserves battery power by placing on standby, low
`power mode, or disabling entirely GPS signal, acquisition, circuitry, and
`other associated devices.” Id. ¶ 36 (emphasis added). Paragraph 36
`further states that “the transceiver circuitry (e.g., . . . location tracking
`circuitry 114 . . . consumes reduced battery power.” Id. (emphasis added).
`Although there appears to be adequate support for the feature of
`consuming at least reduced power, it is unclear whether a person of
`ordinary skill in the art (“POSITA”) would have considered these
`disclosures as also adequately describing the feature of continuing to
`consume at least reduced power. Specifically, given that this limitation is
`part of a step directed to “adjusting applied power levels,” it is unclear
`from Patent Owner’s cited disclosures how adjustments would be made to
`power levels consistent with power consumption being continued. On this
`record, we agree with Petitioner (Opp. 3–4) that the written description
`does not state how applied power would be both adjusted and continued
`from an earlier unspecified state. Nor is it clear from the written
`description whether “continuing” to consume at least reduced power
`involves a temporal requirement, e.g., that reduced power is continued
`indefinitely or for a predetermined time. See id. at 4. Further, there
`appears to be no record evidence or testimony about how the cited
`disclosures would have informed a POSITA with respect to consuming
`reduced battery power and continuing to consume reduced power as
`claimed. The same analysis applies to proposed substitute claims 28–36,
`which depend from proposed substitute claim 27 and incorporate the same
`limitation.
`Comments Regarding Proposed Substitute Claims 37–40
`Petitioner also contends Patent Owner has not shown that the ’905
`application adequately supports “battery power monitor,” as recited in
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`proposed substitute claim 37. Opp. 2. Specifically, Petitioner contends
`that the term “battery power monitor” is only mentioned in the abstract
`and claims of the ’113 patent. Id. Petitioner further contends
`paragraph 29 of the ’905 application states that battery level monitor 116
`merely detects a battery level, and paragraph 29 does not disclose battery
`level monitor 116 as performing any of the claimed functions (i.e.,
`reducing an applied power level to primary location tracking circuitry and
`increasing an applied power level to supplemental location tracking
`circuitry). Id. (citing Ex. 2004 ¶ 29). Petitioner additionally contends
`paragraphs 31, 32, and 36 describe certain elements being placed in a
`sleep, standby, or low power mode, but they do not disclose that a battery
`power monitor is configured to do anything with respect to power modes.
`Id. at 2–3 (citing Ex. 2004 ¶¶ 31, 32, 36).
`At this stage of the proceeding, we do not agree with Petitioner’s
`contentions. Paragraph 14 of the ’905 application states that “[i]n
`response to measured signal strength level, a power management circuitry
`(e.g., battery monitor) controls power levels associated with [a] tracking
`device to reduce or increase power consumption of transceiver and its
`associated circuitry.” Ex. 2004 ¶ 14 (emphasis added). Paragraph 29
`further states that “[b]attery level detection circuitry (e.g., battery level
`monitor 116) detects a battery level of battery 118.” Id. ¶ 29. In light of
`these disclosures, and at this stage of the proceeding, we determine that the
`’905 application adequately supports “battery power monitor,” as recited
`in proposed substitute claim 37. The same analysis applies to proposed
`substitute claims 38–40, which depend from proposed substitute claim 37
`and incorporate the same limitation.
`Conclusion
`Thus, on the record before us and at this stage of the proceeding, Patent
`Owner has shown a reasonable likelihood that there is adequate written
`description support for proposed substitute claims 21–26 and 37–40.
`Patent Owner has not shown a reasonable likelihood that there is adequate
`written description support for proposed substitute claims 27–36.
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`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 21–40 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
`As to proposed substitute claims 21–26 and 37–40, No. Petitioner
`contends proposed substitute claims 37–40 fail to comply with the written
`description requirement. Opp. 2–3. Petitioner does not put forth any
`written description arguments for claims 21–26. On the current record, it
`appears that Petitioner has not established a reasonable likelihood that
`proposed substitute claims 21–26 and 37–40 fail to comply with the
`written description requirement of 35 U.S.C. § 112, first paragraph. For
`reasons similar to those 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 claim 37 fails to comply
`with the written description requirement with respect the “battery power
`monitor” limitation. The same analysis applies to proposed substitute
`claims 38–40, which depend from proposed substitute claim 37.
`As to proposed substitute claims 27–36, Yes. On this record, it appears
`that Petitioner has established a reasonable likelihood that proposed
`substitute claims 27–36 fail to comply with the written description
`requirement of 35 U.S.C. § 112, first paragraph. For reasons similar to
`those discussed above in Section II.A.4 of this Preliminary Guidance, the
`cited portions of the ’905 application do not provide adequate written
`description support for “the primary location tracking circuitry continues
`to consume at least reduced power,” as recited in proposed substitute
`claim 27. The same analysis applies to proposed substitute claims 28–36,
`
`
`1 We express no view on the patentability of original claims 1–20 in this
`Preliminary Guidance. Instead, we focus on limitations added to those claims in
`Patent Owner’s Motion to Amend.
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`which depend from proposed substitute claim 27 and incorporate the same
`limitation.
`
`35 U.S.C. § 112, Second Paragraph – Indefiniteness
`As to proposed substitute claims 21–26 and 37–40, No. Petitioner does
`not put forth any indefiniteness arguments for claims 21–26 and 37–40.
`On the current record, Petitioner has not established a reasonable
`likelihood that proposed substitute claims 21–26 and 37–40 fail to comply
`with the definiteness requirement of 35 U.S.C. § 112, second paragraph.
`As to proposed substitute claims 27–36, Yes. On this record, it appears
`that Petitioner has established a reasonable likelihood that proposed
`substitute claims 27–36 fail to comply with the definiteness requirement of
`35 U.S.C. § 112, second paragraph.
`Petitioner contends that, unlike proposed substitute claims 21–26 and 37–
`40, proposed substitute claims 27–36 include the language “continues to
`consume,” which can be interpreted in multiple ways, thereby rendering
`the limitation indefinite. Opp. 3–4 (citing Ex. 1078). In light of our
`discussion in Section II.A.4 of this Preliminary Guidance, it is unclear
`how a POSITA would have interpreted “continues to consume at least
`reduced power” in light of the written description, particularly with respect
`to how power could be both adjusted and continued from an unspecified
`earlier state. Accordingly, at this stage of the proceeding, we find that the
`limitation “continues to consume at least reduced power” in proposed
`substitute claim 27 is indefinite under the standard set forth in Nautilus,
`Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014) (“a patent is
`invalid for indefiniteness if its claims . . . fail to inform, with reasonable
`certainty, those skilled in the art about the scope of the invention”). The
`same analysis applies to proposed substitute claims 28–36, which depend
`from proposed substitute claim 27 and incorporate the same limitation.
`
`35 U.S.C. § 103(a) – Obviousness
`Yes. On the current record, it appears that Petitioner has established a
`reasonable likelihood that substitute claims 21–40 are unpatentable under
`35 U.S.C. § 103(a).
`Both parties present constructions for “reducing, to a low power mode in
`which the primary location tracking circuitry consumes at least reduced
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`power, applied power level to the primary location tracking circuitry in
`response to measurement of a receive communication level less than a first
`signal level,” recited in proposed substitute claim 21 and similarly recited
`in proposed substitute claim 37, and “wherein the primary location
`tracking circuitry continues to consume at least reduced power,” recited in
`proposed substitute claim 27. Mot. 17–20; Opp. 4–7. Despite our
`indefiniteness finding above, and to provide further information to the
`parties on the “continues to consume at least reduced power” limitation of
`proposed substitute claims 27–36, we consider Petitioner’s obviousness
`grounds below based on one possible interpretation of this limitation: that
`the primary location tracking circuitry consumes at least reduced power
`for some time after adjustment. We determine that it is not necessary to
`provide an express interpretation of any other 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 21–40 are unpatentable
`as obvious under 35 U.S.C. § 103(a) based on the following new grounds:
`proposed substitute claims 21–40 would have been obvious over the
`combination of Sakamoto, Gotoh, Levi, and Alberth (“Ground 3”); and
`proposed substitute claims 21–40 would have been obvious over the
`combination of Sakamoto, Gotoh, Levi, and Gronemeyer (“Ground 4”).
`Opp. 9, 21. Petitioner does not allege that any of substitute claims 21–40
`are unpatentable as obvious based on the instituted grounds from the
`Decision. See generally Opp.
`Patent Owner contends that no combination of the prior art of record or
`known to Patent Owner teaches or suggests proposed substitute claims 21–
`40. Mot. 21. Specifically, Patent Owner contends that Sakamoto teaches
`turning off a GPS receiver, in contrast to “consum[ing] at least reduced
`power while the accelerometer is active,” as recited in proposed substitute
`claim 21, and similarly recited in proposed substitute claims 27 and 37.
`Id. at 21–23. Patent Owner further contends that none of the asserted
`secondary references (e.g., Gotoh, Levi, and Kulach) compensate for the
`deficiencies of Sakamoto. Id. at 23.
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`Ground 3: Proposed Substitute Claims 21–40 (Sakamoto, Gotoh, Levi, and
`Alberth)
`Petitioner contends that Alberth, a newly asserted reference, qualifies as
`prior art to the ’113 patent. Opp. 8. According to Petitioner, Alberth is in
`the same field of endeavor and is pertinent to a problem to be solved by
`the claimed invention of the ’113 patent, and thus is analogous art, because
`both Alberth and the ’113 patent disclose a portable electronic tracking
`device employing a GPS receiver and reducing applied power to the GPS
`receiver by decreasing a frequency at which the GPS receiver activates
`and deactivates at least a portion of the GPS receiver. Id. (citing Ex. 1076,
`4:32–36, 4:50–52).
`Petitioner contends that Alberth teaches “reducing, to a low power mode
`in which the primary location tracking circuity consumes at least reduced
`power, applied power level to the primary location tracking circuitry in
`response to measurement of a receive communication signal level less than
`a first signal level,” as recited in proposed substitute claim 21 and
`similarly recited in proposed substitute claim 37, and “adjusting applied
`power levels to the primary location tracking circuitry and supplemental
`location tracking circuitry in response to measurement of a receive
`communication signal level relative to a predetermined signal level,
`wherein the primary location tracking circuitry continues to consume at
`least reduced power,” as recited in proposed substitute claim 27. Opp. 10–
`11, 14–15. Specifically, Petitioner contends that Alberth teaches a mobile
`station with a GPS receiver operating at two activation rates: a first (i.e.,
`higher-frequency) activation rate used when a GPS satellite signal level is
`high such that GPS positioning can be performed; and a second (i.e.,
`lower-frequency) activation rate used to preserve the power of the GPS
`receiver when the signal level is weak and GPS positioning cannot be
`performed (i.e., low power mode). Id. at 10–11 (citing Ex. 1076, 2:9–17,
`2:66–67, 3:12–13, 3:51–60, 4:25–58, 5:41–45). Petitioner notes that, at
`the second activation rate, at least a portion of the GPS receiver is
`deactivated to conserve power. Id. at 17 (citing Ex. 1076, 4:5–52).
`Mr. Andrews provides supporting testimony that a POSITA would have
`understood the decreased frequency of Alberth’s second activation rate
`(i.e., low power mode) would “consume at least reduced power” compared
`to the higher frequency of the first activation rate. Ex. 1080 ¶ 17.
`Mr. Andrews also testifies that a POSITA would have understood
`Alberth’s teachings about deactivating a portion of GPS receiver at the
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`second activation rate as implying that the GPS receiver’s power is not
`entirely shut off or eliminated in some circumstances. Id. ¶ 18. Petitioner
`cites this testimony in support of its argument that Alberth’s “low power
`mode continues, and the controller continues to activate the GPS receiver
`at the decreased frequency” (Opp. 17–18), which is commensurate with
`the possible interpretation of the “continues to consume” language
`discussed above.
`For the limitation that the reduction of applied power level of the GPS
`receiver is performed “in response to measurement of a receive
`communication signal level less than a first signal level” in proposed
`substitute claims 21 and 37 (and similarly recited in proposed substitute
`claim 27), Petitioner cites Alberth’s teaching that the GPS receiver
`operates at the second activation rate when the signal level is weak.
`Opp. 11–14 (citing Ex. 1076, 3:67–47, 4:25–47, 5:38–41). Petitioner also
`contends that Alberth’s operation at the second activation rate is a “low
`power mode,” as recited in proposed substitute claims 21 and 37. Id.
`at 14–15 (citing Ex. 1076, 4:42–54, 5:41–45). Petitioner additionally
`contends that the second activation rate is designed “to save battery
`power” because operation at the first activation rate has a higher battery
`drain, and, consequently, if the battery drain is not as high at the second
`activation rate, the GPS receiver “consumes at least reduced power,” as
`recited in proposed substitute claims 21 and 37, and similarly recited in
`proposed substitute claim 27. Id. at 15–16 (citing Ex. 1076, 4:34–35,
`4:50–52, 5:41–45; Ex. 1080 ¶¶ 16–17).
`Citing testimony from Mr. Andrews, Petitioner contends that a POSITA
`would have been motivated to further modify the Sakamoto–Gotoh–Levi
`combination to include Alberth’s low power mode to perform activation at
`the second activation rate in order to conserve battery power. Opp. 18–19
`(citing Ex. 1080 ¶¶ 26–30). Specifically, Petitioner cites Sakamoto’s
`teaching of transitioning from a “normal positioning mode” where the
`GPS receiver is periodically turned on/off to a “stop-position searching
`mode” when GPS signals are poor, and Alberth’s teaching of transitioning
`to a second (i.e., lower-frequency) activation rate when position location
`signals are not suitable for processing. Id. at 19 (citing Ex. 1004 ¶ 35–38;
`Ex. 1076, 3:53–63, 4:31–35, 4:50–58). According to Petitioner,
`modifying Sakamoto to use a second cycle in advance (i.e., Alberth’s
`second activation rate) in the stop-position searching mode instead of
`Sakamoto’s single “cycle set in advance” would have advantageously
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`saved battery power, as is taught by Alberth. Id. at 19–20 (citing
`Ex. 1076, 4:31–36, 4:41–49, 6:30–33).
`On this record, Petitioner has sufficiently shown that Alberth teaches the
`aforementioned limitations recited in proposed substitute claims 21, 27
`and 37. Further, Petitioner’s reasons for modifying the Sakamoto–Gotoh–
`Levi system to include Alberth’s low power mode to perform activation at
`the second (i.e., lower-frequency) activation rate in order to conserve
`power 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 22–26, 28–36, and 38–40 depend from one of
`proposed substitute claims 21, 27, and 37, and are substantially similar to
`original claims 2–6, 8–16, and 18–20, which were addressed in the
`Decision. Thus, on the current record, and to the extent that the “continues
`to consume” limitation of claim 27 is interpreted in the manner discussed
`above, Petitioner has established a reasonable likelihood that proposed
`substitute claims 21–40 are unpatentable as obvious over Sakamoto,
`Gotoh, Levi, and Alberth.
`Ground 4: Proposed Substitute Claims 21–40 (Sakamoto, Gotoh, Levi, and
`Gronemeyer)
`Petitioner contends that Gronemeyer, a newly asserted reference, qualifies
`as prior art to the ’113 patent. Opp. 8. According to Petitioner,
`Gronemeyer is in the same field of endeavor and is pertinent to a problem
`to be solved by the claimed invention of the ’113 patent, and thus is
`analogous art, because both Gronemeyer and the ’113 patent disclose a
`portable electronic tracking device employing a GPS receiver and
`reducing applied power to the GPS receiver by shutting off selected
`components while leaving components powered on when the GPS is not
`actively acquiring satellite information. Id. at 8–9 (citing Ex. 1077, 5:14–
`19, 6:41–48, 7:9–12, 7:34–45).
`Petitioner contends that Gronemeyer teaches “reducing, to a low power
`mode in which the primary location tracking circuity consumes at least
`reduced power, applied power level to the primary location tracking
`circuitry in response to measurement of a receive communication signal
`level less than a first signal level,” as recited in proposed substitute
`claim 21 and similarly recited in proposed substitute claim 37, and
`“adjusting applied power levels to the primary location tracking circuitry
`and supplemental location tracking circuitry in response to measurement
`of a receive communication signal level relative to a predetermined signal
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`level, wherein the primary location tracking circuitry continues to
`consume at least reduced power,” as recited in proposed substitute
`claim 27. Opp. 21–22. Specifically, Petitioner cites Gronemeyer’s
`teaching of a “sleeping period” or “sleep mode” (i.e., a “low power
`mode”) where power is conserved in a GPS receiver unit by shutting down
`select components during periods when the GPS receiver unit is not
`actively acquiring GPS satellite location information. Id. (citing Ex. 1077,
`4:1–5, 4:66–5:3, 5:11–14, 6:41–45, 14:13–23; Ex. 1080 ¶¶ 31, 33).
`Petitioner further cites Gronemeyer’s teaching that certain components
`(e.g., a clock and oscillator in a low power time keeping circuit) remain on
`and consume power even during the “sleep mode,” and thus consume
`reduced power. Id. at 22–23 (citing Ex. 1077, 5:14–17, 6:45–48, 7:8–11,
`12:9–13, 12:58–61; Ex. 1080 ¶¶ 34–36). Mr. Andrews testifies that “[a]
`POSITA would have understood from Gronemeyer that the low power
`components of low power time keeping circuit 200 remain on and
`continue to consume power in contrast to the components ‘that are
`powered down’” (Ex. 1080 ¶ 35), which is commensurate with the
`possible interpretation of the “continues to consume” language discussed
`above.
`Citing testimony from Mr. Andrews, Petitioner contends that a POSITA
`would have been motivated to further modify the Sakamoto–Gotoh–Levi
`combination to include Gronemeyer’s select components that remain
`powered during a sleep mode, such as Gronemeyer’s clock and oscillator
`in the low power time keeping circuit. Opp. 23. Specifically, Petitioner
`contends that a POSITA would have been motivated to make such a
`modification to achieve the advantages expressly taught by Gronemeyer,
`including saving power and more quickly reacquiring GPS satellite
`signals. Id. at 23–24 (citing Ex. 1077, 3:25–28, 14:3–12, 14:36–48;
`Ex. 1080 ¶¶ 37–38).
`On this record, Petitioner has sufficiently shown that Gronemeyer teaches
`the aforementioned limitations recited in proposed substitute claims 21,
`27, and 37. Further, Petitioner’s reasons for modifying the Sakamoto–
`Gotoh–Levi system to include Gronemeyer’s select components that
`remain powered during a sleep mode 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 22–26, 28–36, and
`38–40 depend from one of proposed substitute claims 21, 27, and 37, and
`are substantially similar to original claims 2–6, 8–16, and 18–20, which
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`IPR2020-01190
`Patent 8,542,113 B2
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`were addressed in the Decision. Thus, on the current record, and to the
`extent that the “continues to consume” limitation of claim 27 is interpreted
`in the manner discussed above, Petitioner has established a reasonable
`likelihood that proposed substitute claims 21–40 are unpatentable as
`obvious over Sakamoto, Gotoh, Levi, and Gronemeyer.
`For these reasons, it appears that Petitioner has established a reasonable
`likelihood that proposed substitute claims 21–40 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 21–40 are unpatentable as obvious, and that our
`analysis for claims 27–36 is premised on the interpretation of the
`“continues to consume” language discussed above. Patent Owner will
`have the opportunity to respond to Petitioner’s obviousness contentions in
`its reply to Petitioner’s O